Susan Gunelius, in her Forbes post today How Brands Protect Their Reputations by Combatting Trademark Misuse, writes “Today, trademark misuse that could damage a brand’s reputation is still rampant, but brands have a much better chance of catching violations and stopping them before they do any harm. After all, trademark misuse doesn’t only hurt the company that owns the brand and its intellectual property assets. It also hurts consumers.”
Protecting your intellectual property is more important than ever before as we move forward into an increasingly digital age. Properly registering your trademark puts the rest of the business world on notice that the design, word, name, or symbol you are using to identify your goods or services is your official and legal trademark, and it acts as evidence of your exclusive right to use your marks; potentially vital if another business later infringes on your rights.
Here are six separate things brands need to know about trademarks, and how to apply the knowledge to your own business:
1. Work with an attorney – “Not working with a trademark or intellectual property attorney from the very beginning of the trademark application process is a mistake,” says attorney Perry Clegg, Founder of Trademark Access, an online trademark registration service. “They can help you streamline the process, save a substantial amount of time and money, and help you avoid making mistakes which could land you in potential legal trouble in the future.”
2. Run a trademark search first – Running a trademark search should be one of the very first things you do when starting your business. Before you get your heart set on a certain name or phrase, it is imperative to perform a trademark search first. This will let you know if another entity is doing business or has trademarked the word/s you are interested in registering; submitting a blind trademark application to the Patent Office risks both time and considerable financial expense should they deny you due to someone else’s prior use.
3. Don’t waste money on weak trademarks – While trademark law can vary between nations, in the United States there are four basic types of marks. In decreasing order of ‘strength’ (that is to say ‘enforceability’) they are: Arbitrary, Suggestive, Descriptive, and Generic. Descriptive and Generic marks in particular are often entitled to little or no protection under US Trademark Law, regardless of registration, except in the case pf descriptive marks which may acquire distinctiveness, so avoid using them as your primary trademark. “In our case, we trademarked a regional name; New England Lab.” says Rand Weyler, Technical Manager of New England Lab. “When our business grew from New England all the way south to the Carolinas, we realized we hadn’t kept future expansion in mind.”
4. Always use a marking notice –Using the trademark registration symbol is not necessarily mandatory in every legal jurisdiction, but it is always a good idea to do so anyways as you may be waiving rights should you forego its use. For example, in the United States, failure to use an official registration mark limits the remedies you can seek in your civil lawsuit from infringers.
5. Investigate infringement before sending C&D – If you see your trademark being infringed, do yourself a favor and investigate the matter calmly before you draft and send a cease and desist order or engage in any overt action. Sometimes, particularly in the case of published content, you may not immediately be able to determine who the infringing party is, and you don’t want to aggravate any innocent parties unnecessarily by complaining to them about behavior they are not responsible for. The primary concern you should consider before sending a cease-and-deist letter it whether you are confident you are first. You don’t want to admit infringement before you know someone else is the infringer instead of you.
6. Keep future expansion in mind – Finally, remember to keep your planned future expansion in mind. Perhaps there is another business using the same trademark you wish to register, but they are thousands of miles away, clear across the country. In this circumstance, it may be an acceptable risk to proceed with the dual marking. However, if the other business is close and lies within a geographic region you eventually see yourself targeting, you may be quite literally blocked from future expansion by the already established business.
It is easy to find dozens examples of individual businesses failing to heed each of these lessons, and ending up in substantial legal difficulty as a result. Working with a trademark attorney from the inception of your business will help you avoid these mistakes and place you on solid footing regarding your intellectual property from the very beginning of your endeavor.