New Year’s resolutions typically involve committing to something you couldn’t will yourself to do in the past. But, most entrepreneurs that I’ve met enjoy working to build their brands—brainstorming the perfect, simple yet highly-effective name, and working the pavement and social media to spread awareness and gain a loyal following. Alas, this article focuses on the legal side of branding—the behind-the-scenes grunt work to make sure that your trademarks both (i) keep you out of trouble, and (ii) become durable, exclusive and trustworthy players in the marketplace.
A New Year’s resolution to acknowledge the legal side of branding is a lot like one of the most common resolutions: a commitment to get in better shape. The ultimate goals are the same—looking better, feeling better, developing good habits, and positioning yourself for long-term success. The starting points are similar as well—you are already doing some things to meet these goals, like taking steps to maintain a professional and attractive appearance, dressing well, and using at least some common sense when it comes to social events and interactions.
Yet, you begrudgingly realize (at least on some level) that these surface efforts are not enough—that you will need to make meaningful changes in order to maintain a sustainable and healthy existence. And, inevitably, this is where the New Year’s resolutions come into play.
When it comes to doing what is necessary to promote and protect the health of your brands (and ultimately your business as a whole), there are a few important tasks that you need to commit to in order to meet your resolution.
Step 1: See if Your Trademark is Available, and Avoid Liability for Trademark Infringement
The first step in selecting a new trademark is to perform thorough trademark “clearance” research to see if anyone else is already using a similar trademark. This task serves two key functions:
First, it helps you determine whether or not your new trademark is unique, and something that will truly identify and distinguish your product or service in the marketplace. By performing a thorough analysis of what’s already out there, you can make an informed decision as to whether the trademark is something that you actually want to (and, equally important, will be able to) protect.
Second, it helps you avoid getting into deep trouble for trademark infringement. Brand owners spend significant resources to develop and protect their trademarks, and they won’t be shy about seeking to shut you down if you choose a trademark that is too “confusingly similar” to their pre-existing brand. A legitimate claim of trademark infringement can result not only in expensive legal and settlement fees, but also the associated costs of re-branding.
Step 2: Apply for USPTO Registration to Secure Your Trademark Rights and Establish an Exclusive Brand
Once you determine that your trademark is available and won’t get you into trouble, the next step is to apply to register your trademark with the USPTO. Trademark registration with the USPTO provides national exclusive rights to make use of the trademark on competitive goods or services. Equally important, it lets competitors and start-ups know that you’ve claimed exclusive rights in your trademark, making it less likely that they will “innocently” adopt a confusingly similar brand.
What’s more, federal trademark protection applies not only to your specific trademark, but also to any trademarks that are “confusingly similar” and used on competitive goods or services. This is why, for example, Twitter was denied registration for “tweet” as a result of Twittad’s trademark registration for “let your ad meet tweets” (Twitter ultimately settled with Twittad after a five-year legal struggle).
Step 3: Maintain Control of Your Brands and Protect Your Online Reputation
Once you’ve taken the steps to select and develop a unique and protectable trademark, the final step is to institute an ongoing monitoring and enforcement program to make sure that no one else improperly causes harm to your brands. An effective brand monitoring program will watch both new USPTO registration applications and a wide array of online data sources to spot any potential issues. By identifying and addressing issues promptly, you can mitigate the risks of both prolonged costly legal battles and real damage to your brand identity in the marketplace.
Keep in mind, of course, that these measures should be taken with respect to each new brand that your business develops. As business models evolve, new trends come into play, and new product or service lines poise to hit the market, the process starts anew for each new trademark that you launch. Just as maintaining relevance is an ongoing process, so too are maintaining appropriate levels of risk mitigation and exclusivity for your brands.
Jeff Fabian helps business owners protect their brands so that they can stay focused on running their businesses. Visit http://etrademarksolutions.com for more information. You can also follow Jeff on Twitter @jsfabian.
This article is provided for informational purposes only, and does not constitute legal advice.Subscribe to the Podcast