In today’s fast-paced business world, a brand is more than just a name; it is a company’s most valuable asset. A strong brand identity sets a business apart, builds trust, and drives growth. But with increasing competition and the ever-evolving digital landscape, safeguarding a brand is crucial. In fact, according to a UnitedLex 2024 IP Impact Study, a majority of law firms and in-house respondents expect IP filing activity to increase, driven by growth in emerging tech and AI, with organizations eager to protect their brands and inventions.
This article delves into eight essential trademark protection strategies to help navigate the legal complexities and future-proof a brand. By understanding and implementing these tactics, a business can protect its brand’s reputation and confidently expand its market reach.
Eight trademark protection strategies
1. Trademark search
A trademark search determines if a proposed mark is available for registration and use, or if it will conflict with an existing trademark. It involves searching various databases, including the USPTO database and other databases to identify any existing trademarks that are similar to the proposed mark and used for related products or services.
Trademark searches require domain expertise, including a thorough understanding of trademark laws, country specific analyses where databases may not be available, and analysis of search results based on criteria such as similarity in meaning, in appearance, in sound. Because of the complexities in a trademark search, many businesses use specialized IP expertise to assist.
2. Trademark registration
A business has trademark protection as soon as it uses that trademark in commerce, even if it is not registered. This is called common law trademark, rights that are limited to a specific geographical area and that are unenforceable outside of that area. For example, a pizza shop in Brooklyn, New York can only use its name exclusively in Brooklyn.
While a common law trademark is enforceable in state courts, a registered trademark with the U.S. Patent and Trademark Office (USPTO) has greater trademark protection in federal courts than an unregistered mark, and is one the most effective ways to protect your trademark. It makes it easier to prove that a business legitimately owns the trademark, and provides “evidentiary presumption,” the legal assumption that the registrant has the right to use it.
Federal trademark registration provides nationwide protection and additional benefits, such as the ability to use the ® symbol and the right to sue for infringement.
Trademark protection does not apply to other countries; trademarks are considered on a country by country basis, and trademark disputes outside the U.S. likely will not be protected by a federal trademark. If a business’s trademark extends to another country, whether they are manufacturing medical devices in China or selling beach towels in Mexico, it may be important to register trademarks abroad, as set forth in the Madrid Protocol.
3. Domain name protection
A domain name can qualify as a trademark, and prevent cybersquatting and domain name infringement, if it is used in connection with a website that offers services to the public; however, it typically incorporates the business’s trademark.
Not all commercial domains get trademark protection. Strong ones (unique, used for business, like amazon.com, which directly reflects the company’s brand name “Amazon”) fight cybersquatting, but generic ones (e.g., dictionary.com, pets.com) offer less protection.
4. Trademark monitoring
While the USPTO registers a trademark, they are not responsible for enforcing its exclusivity. Through regular trademark monitoring, the process of continually looking for third-party use of a brand’s trademarks, companies can detect any infringements.
Businesses can outsource this process to specialized IP service providers that automate trademark monitoring using a variety of databases, rather than hiring a dedicated team. Through trademark monitoring, businesses are quickly alerted to new trademark applications that may be a conflict, gain insights on competitors’ activities, and get detailed and actionable information about the conflicting mark.
5. Online and digital marketplace monitoring
Online and digital marketplace trademark monitoring involves searching the web for unauthorized use of a brand’s trademarks. Sources typically include social media (including private stores on Facebook), ecommerce sites, piracy, including unauthorized download links and live streaming, domain names, and supply chains.
6. Offline market monitoring
Offline monitoring involves actively monitoring physical stores, distributors, manufacturing facilities, and other supply channels to identify and address any unauthorized trademark use or counterfeiting. Offline monitoring is especially helpful to protect trademarks in gray markets, where products that sold outside of the authorized distribution channels by the original manufacturer or trademark owner.
Gray market activity can impact a brand’s pricing strategy, distribution network, and overall brand image. For example, a Rolex watch might be significantly cheaper in certain countries due to lower taxes or different pricing strategies. If there are significant differences between gray market products and authorized ones, such as quality, packaging, or warranty, it can lead to consumer confusion and potentially dilute the brand’s image.
7. Trademark enforcement
Trademark enforcement is a critical component of trademark protection. If a company fails to enforce its trademark, its brand can be diluted, it can lose revenue and market share, and it can lose its rights to the trademark altogether.
U.S. trademark, anti-counterfeiting, and unfair competition laws provide businesses with causes of action to shut down gray market and counterfeit products, along with other trademark violations. To enforce a trademark, the trademark owner typically sends a cease-and-desist letter to the alleged infringer, outlining the infringement claims and demanding that the infringing activity cease. If unsuccessful, the trademark owner may file a lawsuit to protect their rights. Other enforcement actions can include takedown notices, raids, and seizures.
8. Trademark maintenance
A vital component of trademark protection, trademark maintenance ensures a registered trademark remains valid and protected by actively using it in commerce. Maintenance also requires period filings with the relevant trademark office to demonstrate continued use, preventing the loss of trademark rights due to non-use or failure to comply with renewal deadlines.
Taking a strategic approach to trademark protection
A strong trademark is a valuable asset that deserves robust protection, and is an important component of an optimized IP strategy.
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