Trademark Law: 5 Tips for Protecting Your Brand

“As intellectual property attorneys, we are often asked, ‘Do we really need to register our marks?’ The short answer is yes. While it is possible to establish rights in a trademark based on use of the mark in commerce, it often saves both time and money to register the mark with the United States Patent and Trademark Office.” (From Trademark FAQ: What Are the Benefits of a Federal Trademark Registration? by Jeffrey Sheldon) 

You’ve built a brand around your name, your product, and your reputation. But the work isn’t over yet. From lawyers and law firms on JD Supra, five tips for protecting that brand with a registered trademark:

1. Your parents were right: do your homework…

“Adopting a trademark without checking to see if someone else already owns it, is like buying a house without checking the deed records.” (From Intellectual Property Basics by Jackson Walker) 

2. Don’t be greedy: file trademarks only for marks you will actually use…

“For ‘intent-to-use’ trademark applications, the applicant must certify that they have a ‘bona fide’ intent to make use of the trademark in commerce. This prevents companies from snatching up would-be trademarks solely in order to prevent their competitors from doing so first.” (From Guide to Efficient USPTO Trademark Registration Applications by Jeffrey Fabian) 

3. Listen to your lawyer: don’t try to go it alone…

“Trademark counsel can quickly conduct and review an initial trademark ‘knock-out’ or ‘screening’ search of the U.S. Patent and Trademark Office database to see if any trademark registrations or pending applications exist for marks that are identical to the proposed name(s).” (From Inside M&A – September/October 2011 by McDermott Will & Emery) 

4. The best surprise is no surprise: police your trademarks…

“Trademark owners have a duty to police for infringing uses of marks… It would be wise to develop a monthly policing program for online infringements of your valuable trademarks.” (From Avoiding Surprises With Your Trademark: Keeping a Lookout for Online Infringement by Dunner Law PLLC) 

5. Stand up for your rights: respond to, don’t retreat from, trademark bullies…

“In the allure of social media, where everyone is a commentator, bloviator or bellyacher, failure to manage your own destiny simply opens it up for someone else to step up to the plate and do it for you… Failure to correct, clarify or comment on erroneous, negative or stressful information turns out to subtract directly from your integrity.” (From Silence Can Be Toxic – Or, Tips for Counteracting Trademark Bullies by Winthrop & Weinstine, P.A.) 

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