By Kathryn Park, Principal, Strategic Trademark Initiatives, Connecticut, USA
You’ve done it! Developed an online store, connected a YouTube channel, developed an app. You’ve lined up some investors and developed great content and merchandise. And you are working on developing a cool brand identity that will help you quickly monetize your hard work. Trademark protection is critical in establishing long-term protectable rights in the brand you choose. A brand identity comprises the name, trademark, logo, slogan and other indicia of the brand, such as color scheme (collectively, the brand). Most of this is protectable under trademark law in every country and jurisdiction.
Don’t rely exclusively on descriptive phrases
Often, the naming and branding part of any new venture is seen as the fun part of developing that business. You or your friends think of a clever name and logo. Or you’ve retained a branding consultant to help you pick a brand with staying power. Here are some important tips in that process.
Don’t rely exclusively on descriptive phrases. Your technology may be the smartest of SMART choices, but no one can own a protectable right using that term. Generic terms, which describe the class of goods or services, are never protectable, so being minimalistic and calling your new fragrance simply “PERFUME” won’t get you any protectable rights. And laudatory terms aren’t usually protectable either, so a brand that names yours BEST won’t gain you much in the way of protectable rights.
If a third party helped develop the brand, whether your best friend or a marketing and branding consultant, ensure you get appropriate agreements from everyone involved assigning all such rights to you or the company that will own and operate the brand. Otherwise, you will have headaches down the road when you need to file to protect your new brand and it is unclear who the legal owner should be.
Assuming you have avoided these common mistakes, you now need to take steps to ensure you can develop legally protectable rights in your new identity to avoid ending up in legal challenges by inadvertently copying another party’s brand.
With a little investment of time and capital, and good legal advice, your brand can be good to go!
Conduct a trademark search
The trademark laws of most countries grant exclusive rights in the brand as used in connection with specific goods or services, provided that the brand, or something quite similar to the brand, even if not identical, is not already in use by a third party for the same or similar offerings.
The first step is to conduct trademark clearance searches to identify competing uses, which could present a challenge to your use. Applying to register your brand without taking this first step can be an extremely costly error, as filing fees are never refundable, and the cost of defending your brand, whether in court or in challenges at a trademark office, can be prohibitive.
So how do you search and clear your proposed new brand?
First, consider the geographic regions that will comprise your major focus. Are you targeting new customers in China and Indonesia? Is your market the United States or the European Union? Even if you plan big, and hope to be a global entity, searching the entire planet for similar brands is beyond the scope of even corporate behemoths, so define a starting point.
Next, consider your options for conducting such clearance. All trademark offices have databases of registered trademarks and pending applications that can be searched online without a fee. Many first-time brand owners will try to make the determination that a brand is clear for use based on such searches. While that effort is commendable, and can be a good first step, it is not enough to ensure the brand you want is available.
How can you interpret results where similar brands are revealed, or brands that are alike, which often cover a myriad of goods and services?
Trademark clearance or search firms can conduct comprehensive searches for the proposed brand. These reports are often very lengthy and can be complicated to review and interpret. While the search companies are always refining their products to make them easier for the non-trademark specialist to use, even so, dashboards and risk assessment tools may not accurately reflect the market in which your brand will compete. And importantly, search firms typically don’t offer a legal opinion on the mark’s availability, which can be critical if your rights are ever challenged.
While most trademark offices allow owners to file directly online, there are reasons to consider using expert legal professionals.
Get legal guidance
The best approach is to set aside part of your budget and seek legal guidance. A good trademark professional can order a clearance search tailored to your needs, review it with knowledge of trademark law and then provide guidance, pointing out potential pitfalls and perhaps developing a strategy to proactively manage them.
While law firms can be expensive, many have flat rates to conduct and advise on brand selection. If you are a small startup or a not-for-profit, some companies as well as law firms provide assistance pro bono. Law schools may offer clinics that help with such issues, too.
File an application to register your trademark
Let’s say you’ve cleared your brand, and you are eager to start using it. Do you need to do anything more? The simple answer is yes. While you don’t need to wait further to put your brand into use, you should immediately file trademark applications to register the trademarks, slogans and logos of your brand to protect them for the goods and services you are selling or offering.
In most countries, the United States being the greatest exception, the party that files the trademark first is the party that will be deemed to have exclusive rights to it. Filing as quickly as you can once you have cleared your brand is critical. In the United States, which requires actual use to achieve registration, prompt filing on an intent to use basis will protect your brand from subsequent filers, even if others have commenced use, provided you file a statement showing you have established use within an allotted time frame.
Where should you file? It is simply not cost effective to file your new brand in every country and jurisdiction under the sun. Start by filing in the jurisdictions where you plan to use the brand, and/or manufacture the products identified by the brand.
While most trademark offices allow owners to file directly online, there are reasons to consider using expert legal professionals. Filing will require some specifics, such as identifying the classification of the goods and services the brand will be used in connection with, potential disclaimers of descriptive parts of the brand and writing an identification of the goods and services to be offered with the correct terminology, to name a few.
While many of the online portals for official trademark offices provide tutorial help, filing pro se (on one’s own behalf) can lead to difficulties down the line. Even more problematic can be using one of the myriad legal services companies that are not law firms, but which offer quick filing help. Often, these firms do little more than ask you for the information needed to file the form and do not flag any potential problems with the mark, such as descriptiveness or genericness or unregistrability, or other reasons. Even though some legal advice may be available for additional fees, these firms may not be equipped to deal with complex objections or inquiries from trademark offices.
The cost-effective solution, again, is to find experienced legal help. Many firms will offer flat fee arrangements, and there can be pro bono help as well. Your legal counsel can also aid your determination whether you should file your mark in multiple jurisdictions and, if so, help develop a comprehensive filing strategy to protect your brand.
Once filed, the trademark office scrutinizes the application and may raise questions or objections in the form of an office action. A lawyer should be able to advise you and draft a response to handle those questions and objections.
Skip down the road several months. Your brand is registered! You have exclusive rights in your new brand in your product categories! What does this mean for you in terms of next steps?
A first step towards acquiring trademark right is to conduct trademark clearance searches to identify competing uses, which could present a challenge to your use. Failing to do so can be costly.
Build brand recognition
First, use your brand in a consistent manner so that it develops customer recognition. Brands like Coca-Cola, for example, are instantly recognizable in part because of the consistent use of the same color scheme, font and logo. Unless the brand is meant to keep changing color, or the name is one in which the font varies on purpose, and customers recognize these as attributes of the brand, keep your use consistent. If you filed to register a logo or the name in distinctive typeface, use the mark as it was filed. Deviations from this mean that you may not be able to rely on your registrations should you need to enforce your rights.
Second, protect your brand by filing to register it as a domain name and secure your brand across social media platforms like Twitter, Instagram and others.
Monitor your brand online
You should monitor your brand online to ensure it isn’t being misappropriated or misused. Often, your customers will be the first to let you know if that is happening. If you do come across such misuse, you will need to evaluate whether this use arises at a level, which would compel you to take action.
While imitation is the sincerest form of flattery, it can jeopardize the legal rights you’ve worked so hard to develop and protect. A demand letter asking that the use stop immediately is often the way to start, and again, this type of demand is best coming from legal counsel. If the injurious use is of an infringing domain name, there are procedures to challenge such use as well, which legal counsel can assist with relatively quickly and inexpensively.
If the infringing use is actual counterfeiting, in other words, fake products being marketed as if they were your products, you may need to take more aggressive legal steps, such as seeking relief in court, or asking for assistance from law enforcement. Those kinds of enforcement issues don’t usually arise immediately, but typically only after a brand has established cachet within its target demographic customer base. If you have established a good relationship with an experienced trademark attorney, you will have a resource that can come to your aid quickly. Your lawyer may also help you determine if you should take proactive measures such as filing a copy of your registration certificate with various customs offices, which can then seize counterfeit goods at the borders.
With a little investment of time and capital, and good legal advice, your brand can be good to go!