26 February, 2018
This is your guide to the trademark journey, from idea to registration to protection.
A strong trademark can be one of your company’s most valuable assets. It can help differentiate your offering from competitors in the marketplace, creating a memorable association in the consumer’s mind to help drive awareness and sales. So how do you go about securing trademark rights? And, once you do, how do you defend your trademark from others who may use it without your permission, called “infringement”?
What is a trademark?
Let’s start by defining what a trademark is. A trademark (often called simply a “mark”) is a word, symbol, design, combination of letters and numbers, or other device that identifies and distinguishes a product or service in the marketplace. A trademark can be a company name, a product name, a logo—even a specific color, smell or sound, associated with a product or company, may be considered a trademark. Regardless of its form, the purpose of a trademark is always the same: to create a distinct identity for your product or service.
Why register your mark?
Registering your trademark with the appropriate governmental agency in the U.S. and/or other international jurisdictions where you plan to conduct business helps afford maximum legal protection for your trademark rights. To avoid potential problems, you may want to make sure your mark is distinctive and not already in use by another party before you apply to register your mark. Marks that are identical or so similar that they could cause confusion in the marketplace (the technical term is “confusingly similar”) may not be approved for registration because they infringe on the existing mark.
Finding a truly distinctive trademark is becoming more difficult as the number of existing trademarks increases worldwide. As a result, it’s more important than ever to make sure you take all necessary steps to create, research, register, and protect your valuable trademark.
How to secure and safeguard your trademark
Let’s look at the typical steps involved to secure and safeguard your trademark
The first step is ideation—creating a distinctive trademark name, symbol or other device. This may involve brainstorming, using name creation software, hiring a branding company or a combination of these. Whatever method you use, you may want to keep in mind the following tips:
Make it distinctive. Avoid generic or descriptive names (e.g., Catnip for a cat toy) which make weak trademarks or may not be registrable. Also avoid misleading names. Instead, focus on names based on words used out of context (e.g., kitty litter for greeting cards) or coined terms (e.g., Google), which generally make the strongest trademarks.
Think multilingual. Avoid names that could have negative connotations in other common languages. Other names may have cultural associations that are best avoided. Do your homework to avoid costly and embarrassing missteps.
Don’t forget domain names. The web is a crucial component of most marketing efforts today, making domains essential brand assets. Consider making sure up front that the trademark’s domain name is available and not already in use by someone else.
Once you have a list of potential trademark candidates, you’re ready for the next step.
Advanced, self-service trademark research tools can help you identify marks that are identical or confusingly similar to your trademark candidates. This may include phonetic equivalents, synonyms, homonyms, marks incorporating the same or similar prefix, suffix or root word, and – if applicable – non-English translations.
You may want to review both trademark applications and registrations. In use-based jurisdictions, you may want to include trademarks that are in use in the marketplace, but may not be applied for or registered. This is called a “common-law” search. This is important because in some jurisdictions, including the U.S., trademark protection may be granted to the owner who first uses the mark commercially, whether or not the mark is registered. In these jurisdictions, failing to search common law sources—such as the web, business directories and publications—could increase your risk of inadvertently infringing on someone else’s trademark rights.
Note that all trademarks fall into one or more classifications—called “goods and services classes”—for registration purposes. These are the categories in which the trademark will compete. Therefore, you may want to focus your search on the classes relevant to your trademark. This may help you identify those conflicts that are most likely to impact your ability to register your mark.
The result of your search will be a report that contains citations of trademarks and domain names that represent potential conflicts. This information will help you in determining whether your trademark candidates are available for use and registration.
Once you are confident you have a trademark that will not infringe on anyone else’s, you can file to register the mark with the appropriate trademark offices. The process varies from one country to another; for this example, we’ll look at filing with the United States Patent and Trademark Office.
In the U.S. there are two types of trademark applications:
Use-based. This is filed when you have already begun to use the mark in commerce.
Intent to use (ITU). This is for a mark that you intend to use but have not yet used in commerce.
An examining attorney at the USPTO will review your application and conduct research to determine if your proposed trademark is confusingly similar to any existing marks. The process varies a bit from country to country.
The opposition period
When filing through the USPTO, if no conflicting marks are found and your mark meets all other qualifications, e.g., not generic, capable of distinguishing the goods / services, it will be published in the USPTO’s Official Gazette. This begins the “opposition period”—other trademark owners who believe their trademark rights would be harmed by registration of your mark have 30 days from the publication date to oppose your application or to obtain an extension to file an opposition.
Often, the challenging party will seek to negotiate an amicable settlement. If this is not successful, the opposition case may go before the USPTO’s Trademark Trial and Appeal Board (TTAB), which then renders a decision.
If no opposition is filed, or if the opposition is successfully overcome, the USPTO will generally grant your trademark registration. Note: you may want to register your trademark domain name at the same time, to help ensure it receives the same protection as your mark.
Congratulations—your trademark is now registered. You’re done, right? Not likely. Now you may want to protect and defend your trademark rights. In fact, ongoing protection is typically one of the most important, yet often overlooked, steps in trademark ownership.
Think it can’t happen to you? Consider these recent statistics:
74% of brand owners surveyed experienced trademark infringement in the last year.
56% of survey respondents said their organization had taken legal action against third-party infringements and one-third had changed a brand name due to trademark infringement issues.
Since new trademark applications are filed daily, you may want to monitor trademark offices in all the countries where your mark is registered—a process called “trademark watching”—to help ensure no one else is applying for a mark identical to or confusingly similar to yours.
You may also need to watch for trademarks that are not registered. This means monitoring a range of sources—including the web, company name directories, and social media—for uses of trademarks and domain names that could infringe on your mark.
The good news is that self-service trademark watching tools are available to help. Once you set up trademark watching, the tool automatically monitors all selected jurisdictions and alerts you when potentially infringing trademark applications are filed or found in the marketplace. Armed with this knowledge, you can determine a plan of action to defend your rights. This may mean sending a cease and desist letter, negotiating a co-existence agreement, filing an opposition or cancellation action, or other related step. If you believe someone else is infringing on your mark, engaging a trademark attorney to advise and represent you may be a very wise investment.