You Have a Great Name for a Terrific Product – Here’s How to Protect It…

“The strongest and most easily protectable types of marks are fanciful marks and arbitrary marks, because they are inherently distinctive. These marks are also easier to register because it is more unlikely that someone else has registered something similar.” (Sands Anderson)

Got a terrific product and a great name for it? Excellent! Protecting that name can be a daunting task. Fortunately, there’s help.

From IP attorneys on JD Supra, here’s a trademarking primer in five steps:

1. Register to protect your trademark:

“There is no requirement to register your mark, but there are many advantages to doing so. A federally registered mark is presumed to be a valid mark and the registrant is presumed to have the exclusive right to use the trademark throughout the United States on the goods or services listed in the registration. A registered mark will also be revealed in searches conducted by other businesses in their effort to avoid selecting marks that may conflict with those of others. In addition, only federally registered trademarks or service marks may use the ® symbol.” (Knobbe Martens)

2. Monitor employee use of your trademark:

“When an employee uses a company’s trademarks in a social media platform, it creates a host of concerns for the employer. For example, an employee’s use of a mark may suggest a connection between the employer’s mark and the employee’s comments and other posts. Or, in more serious cases, an employee’s improper use of a mark could cause serious damage to the strength, reputation and goodwill associated with the mark.” (McAfee & Taft)

3. Watch for unauthorized use:

“Trademark owners have a duty to police their mark. This applies to all types of marks – brand names, slogans, color, product shapes, or even a smell. The cost of dropping the ball on this duty can range from a bar on future enforcement of your rights against a particular company to a complete loss of all trademark rights. As a practical business reality, the value of marks that are not policed and their associated goodwill are always in danger.” (Mintz Levin)

4. Use it or lose it:

“If you stop using a trademark with an intent to not resume its use, you will be deemed to have ‘abandoned’ your trademark. That intent is judged on the circumstances (e.g., you drop the product line using the brand name, or you continue the line but replace the name with another). Non-use for three consecutive years creates a presumption of abandonment. Since use in commerce is what creates the trademark, non-use can cost you your trademark rights.” (Ervin Cohen & Jessup)

5. No name yet? Use your imagination:

“I have worked with countless marketing companies that advised their clients to ‘be descriptive’ when selecting the name of a company or product. […] [T]ruly descriptive marks get relatively little protection under the trademark law. In the long run, you may spend more in registration costs and enforcement costs than you save in advertising costs. And a descriptive name doesn’t stand out as well in the marketplace. So I advise my clients to make up a word to use as a trademark (known as a fanciful or coined trademark) or adopt a word that has nothing to do with their product or service (an arbitrary mark).” (Sands Anderson)

The updates:

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