Regardless of your field or industry, the boom in today’s digital business landscape and online marketplace is undeniable. As more and more companies turn to virtual sales and remote work, the need for additional brand protection both in-person and online has become increasingly evident.
As the owner of a business, you understand the importance of establishing a strong brand or risk getting edged out of the crowded market by competitors whose brand names are at the top of your customer’s minds—and you are not alone in this recognition. In 2019 alone, 493,307 trademark applications were filed with the United States Patent and Trademark Office.
There are three ways, in general, to protect your company’s brands, or trademarks, and to start building valuable goodwill and recognition in your company’s intellectual property.
Search & Analysis: What’s Already Out There?
The first way to protect your company’s trademarks is to know the marketplace and to know what is already protected by others. This may seem obvious, but under U.S. trademark law, trademark owners are able to stop others from using any name that is confusingly similar to their trademark for related goods and services.
Thoughtful analysis of your proposed trademark is important because many new brand owners will assume that because the exact word is not registered with the United States Patent and Trademark Office as a trademark, then it is available. This is simply not true and can lead many new brand owners into trouble.
See also: Executive Insight: Repeat Business
A trademark professional, such as a trademark attorney can analyze your trademark and do a comprehensive search for potential issues. These searches are deep-dives and should give you a clear understanding of the potential risks moving forward in using and (as discussed below) registering your trademark.
A skilled professional can also evaluate the strength of your trademark as well—the US government does not protect merely descriptive or “generic” marks, and your trademark registration could be denied if the government attorney finds evidence of descriptiveness. For example, SOFTWARE SOLUTIONS is likely to be descriptive of services provided by a computer software company, but BETTERCOM SOFTWARE SOLUTIONS would be distinctive, as it includes a fanciful name in front of the descriptive wording.
Performing this analysis is crucial for avoiding pitfalls.
Registration – Getting to ®
The gold standard in trademark protection goals is a registered trademark with the United States Patent and Trademark Office. Registration gives you nationwide coverage of your mark and puts the rest of the industry on notice of your rights. A registration is also extremely important to investors and can even, in some circumstances, be used as collateral for loans as a company asset.
From a practical perspective, a trademark registration works as both a sword and a shield. It can help you defend against third parties who may make claims against you, but also as a sword to stop others trying to ride your company’s coattails and hard work in establishing your name within the industry.
A trademark registration gives the owner the presumption that it is the owner of the trademark and that the trademark is valid—without it, it can be very difficult to establish that a company owns an unregistered trademark.
To register with the government, a trademark owner must apply with the USPTO. The application will include an exact representation of the mark and the specific services that the applicant is applying for. This list of goods and services is important, as any misrepresentations or mischaracterizations of the services could delay the application or even be fatal to the registration.
For example, if your company is providing IT services, then you are likely going to include International Class 42 in your application. But what about the specific services are you offering? Information technology consulting services? Computer security consulting? Installation services? Network management? You will need to determine exactly what the layman’s terms are for your services, but not be too specific to unnecessarily limit the scope of your federal rights.
Registration typically takes 9-12 months, but there are several milestones. In 3-4 months, the USPTO examining attorney will issue their first Office Action with any procedural issues or substantive refusals. If there are none (or when they are resolved), then 3-4 months after that the application will be published for opposition, a 30-day period where third parties can challenge the registration of the mark. If no one opposes, then 3-4 months after that, the registration will issue (or you will need to file proof of use if you originally filed before you began using the trademark.)
It is a long, challenging process, but owning a registered trademark can give your company the edge over your competition.
Trademark protection does not end with the registration of the mark. Trademarks owners must diligently protect their rights from infringers or risk weakening their trademark rights. However, the key to enforcement is strategic monitoring and action.
Various paid services exist for in-depth monitoring, but at the very least, trademark owners should set up free Google Alerts on their name and possibly a few variations so they are notified of third party use of their name. A paid service will typically monitor the USPTO database for confusingly similar trademarks and alert the owner to potential infringement. Either way, trademark owners must be diligent.
When a potential infringer is identified, it is absolutely necessary to fully evaluate the claim and potential defenses before taking any enforcement action. Businesses can quickly find themselves on the other end of a lawsuit if they make claims that cannot be substantiated, or worse, make claims against someone with prior rights in the trademark.
If enforcement is necessary, it is important to send a well-researched letter laying out the claims and the demands. An angry email rarely solves trademark disputes and could significantly prejudice the enforcement. An experienced trademark attorney can help provide a roadmap to your enforcement issue and help you decide the best way to handle an infringer.
Brand protection is important for your businesses, especially in our age of virtual stores and the online marketplace. By following these three steps, your company can protect its valuable assets and build a strong, recognizable brand.
Josh Gerben is the founder of Gerben Law Firm, PLLC, a full-service intellectual property boutique offering trademark, copyright, and patent services. Since 2008, Gerben has secured over 5,500 trademarks for clients and has been featured in a wide range of local and national news outlets, including NPR, The Washington Post, The Wall Street Journal, CNBC and more.
See also: Executive Insight: Our Finest Hour