5 Considerations for Protecting Your Trademark

If you’re running a business, you’ve probably got a trademark. From law firm Akerman Senterfitt:

“Put simply, your trademark is your brand name. Legally, a trademark is defined as a word, phrase, symbol or design, or a combination of those things. It is something visual (but it can be a sound or even a scent) that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it names a service rather than a tangible product.” (Launching Your Business or Product? Pick a Good Trademark)

Having a mark associated with your company doesn’t automatically give you the right to stop others from using it, however. That requires registering it with the US Patent and Trademark Office:

“A trademark registered with the federal government carries a number of advantages over one that has not been registered… [O]nly federally registered trademarks can be enforced in federal court – so if someone is using your mark illegally, you can use the federal courts and federal law to get them to stop.” (How to Pick a Trademark by Tom Galvani)

From lawyers and law firms on JD Supra, five considerations for protecting your trademark:

1. Not ready to launch? You can still protect your trademark:

“If you have not yet used the mark in commerce, but plan to do so in the future, you may file based on a bona fide intention to use your trademark. This allows you to try to ‘reserve’ a trademark – to prevent others from taking and using it – until you are ready to launch your product or service. The USPTO will not issue the trademark registration until you have filed proof of the requisite use during the statutory period for doing so, but the mark will be approved (or “allowed”) for registration, and you can have up to three years of extensions of time to launch your product or service under the allowed mark.” (Launching Your Business or Product? Pick a Good Trademark by Akerman Senterfitt)

2. Do your homework before filing:

“As a best practice, you should never decide on any important slogan or other trademark without first researching the marks on the federal register. What you want to avoid is adopting a new logo, putting it on all your packaging and advertising, rolling it out with a new marketing campaign, and then discovering that another company has already registered a similar trademark on the federal register.” (Five Good Reasons To Register Your Trademarks by Clifford Hyra – Hyra IP, PLC)

3. Consider international registration:

“Trademark protection in one country does not provide any protection in other countries… [I]n our increasingly globalized society, trademark owners must ensure that the goodwill represented by their trademarks is protected in those countries deemed significant enough to warrant protection. This is because of the inherently territorial nature of trademark protection.” (International Trademark Protection: Why Don’t My U.S. Rights Protect Me Elsewhere? by Mintz Levin)

4. Monitor and defend your mark against infringement:

“Many brand owners tolerate minor third party uses of their marks, including unauthorized parodies, fan clubs and the like, which are undertaken in good faith. But brand owners must act to protect their rights when third parties go too far. Potential red flags include actual confusion, complaints from customers, impact on sales, and formal trademark filings by third parties. In these circumstances, a line has been crossed and trademark owners can and should consider taking action.” (How to Protect Your Brand Without Being a Trademark Bully: Lessons from The North Face and Coke by Foley Hoag LLP)

5. Conduct regular trademark audits:

“Just like a health check-up, business owners should thoroughly review their trademark portfolio on a yearly or even bi-annual basis because: 1.) it will identify new and existing marks and give the company a clear picture of its assets and 2.) it will help a company manage, protect and fully exploit the value of those assets. When companies fail to conduct audits on a regular basis, business nightmares may occur.” (The Trademark Audit: A Necessary Legal Checkup by Mintz Levin)

Further reading:

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