Brand Protection 101: The No-Brainer Way to Protect and Enforce the Rights Associated With Your Brand
A special guest post from attorney, and friend of EA, Lucas Vande Sande
How do I protect my ‘brand’?
What is the single most important step I can take to protect my brand?
In an age of e-commerce, social media, and the propensity for easily spread misinformation, the concept of “brand protection” has never been of greater importance to business owners, entrepreneurs, marketers, designers and developers.
The term “brand” is a broad term defined by Investopedia as “an intangible marketing or business concept that helps people identify a company, product, or individual.” From a legal perspective, the “rights” that accrue from brand development and usage that can be protected, strengthened and enforced exist primarily in the realm of intellectual property law, and most frequently in the context of trademark and copyright law. Trademarks (and service marks) are used to designate the source or origin of goods and/or services, and may include words, distinctive designs, graphics, logos, symbols, sounds, smells or any combination thereof that uniquely identify goods or services. Think, Apple, Coca-Cola, Lululemon, The Capital Grille, the Polo horse, the Nike “check” mark, “Let’s Get Ready To Rumble”, etc.
So, what is a singular, efficient, proactive way to protect, strengthen and enforce the intangible rights that comprise your ‘brand’? Federally register your trademark(s) and service mark(s) at the United States Patent and Trademark Office (USPTO)!
Filing a properly drafted application to register a trademark or service mark is a no-brainer investment for anyone using, or intending to use, a mark in connection with their “brand.” Although this ideally occurs in the early stages of a mark’s intended or actual use, every business no matter the size or how long they have been operational will benefit from federally registering their marks. (Note: Before an application is filed with the USPTO, and ideally before a mark is used in commerce, have an attorney conduct a clearance search to ensure not only that your mark is registrable, but that your usage of the mark is not infringing on another’s rights! The last thing you want to have happen is to go to market with an infringing mark and become a defendant in federal trademark litigation! No one wants to launch a business and be budgeting for litigation expenses, and no one wants to be told in court they can no longer use their mark, especially after public goodwill has been established and time and money have been expended to foster the mark’s development!)
THE ADVANTAGES OF A FEDERAL TRADEMARK REGISTRATION:
1. A nationwide scope of protection. Without a federal registration, trademark owners must rely on “common law” rights, which are limited to the geographic area of trademark use. Not so once a mark is registered. Federally registered marks are enforceable nationwide as of their application filing date. This provides the mom & pop boutique clothing store located in Maryland who has registered their mark used in connection with only a single location to oppose registration by a Fortune 500 company located in California who later wishes to use and register a similar mark in connection with similar goods.
2. Trademarks are highly valuable assets made more valuable by registration. Trademarks are intangible assets that benefit your balance sheet. They increase in value over time and use, and a trademark registration will not expire (as long as properly renewed). If you could/would conceivably sell your business or license your mark, a registration will not only likely be required but it will enhance your negotiating leverage and lead to a more favorable sale price or licensing terms.
3. Recognized legitimacy (makes enforcement easier!). A federal trademark registration serves as evidence of the validity, and your exclusive ownership, of the mark in connection with the goods and/or services recited in the registration. Success invites imitation, and if your mark is infringed upon, the enforcement process is usually greatly expedited when there is a federal registration accompanying your cease-and-desist letter. Many a frustrating (and expensive) letter writing campaign has begun with cease-and-desist letters sent from those without federal registrations, relying instead on common law rights. Without a federal registration which identifies you as the owner of the mark, the date you filed the application to register the mark, and the registration date of the mark, the response from the infringer is hardly ever immediate compliance, with responses ranging from “prove it” to complete disregard. Many times the cost associated with drafting and sending correspondence back and forth in these scenarios quickly becomes many times more expensive than the cost required to register the mark.
4. The Federal Government protects your interests. Regardless of your opinion about the Federal Government at large, there is no denying the benefit it provides (at no additional cost) once you have filed an application to register, or have registered, your mark. This is because the Trademark Office has a duty to cite prior issued registrations and pending applications for confusingly similar marks, and to refuse registration to such marks. If you have been using the mark PASTIES in connection with pens since 2012 and registered the mark in connection with such in 2013, and someone files an application to register a mark likely to cause confusion with yours at a later date with a later date of first use (i.e. – does not have to be an identical mark used in connection with identical goods/services – think PASTIE in connection with pencils, filed for in 2017), the Trademark Office will refuse to register the mark based upon a “likelihood of confusion” without your ever needing to lift a finger.
5. Nationwide notice – a useful way to deter potential infringers and eliminate the “good faith” infringement defense. As soon as an application is filed to register a mark, the mark then appears on the USPTO registry. Now, anyone who is conducting a USPTO search in hopes of using your mark (or a similar mark in connection with similar goods/services) will be confronted with the fact that you may have beat them to the punch. This prevents problems before they even begin. Appearing on the USPTO registry also is considered to provide nationwide “constructive notice” – meaning an infringer in California cannot claim to “not know” of the Maryland resident using the same mark in connection with the same goods, when the Maryland resident has previously applied for registration of a mark, even if it has not yet registered.
6. Use of the “registration” symbol. You know what’s a useful deterrent to those looking to copy your mark? Usage of the ® symbol. But, if you have not registered the mark, using the ®symbol could leave you on the hook for fraud (you should still use the ™ or ℠ symbol though).
7. Access to federal court. If your brand is infringed and litigation is necessary, you will need a ticket to federal court. Having a federal trademark registration provides access to federal court and, in certain situations, awards of enhanced damages and attorney’s fees.
8. Customs + Border Protection Support. An underrated and underutilized perk of federal trademark registration, especially in an era of global commerce and overseas infringement. Let’s say your brand is ALFALFA, and you use the mark ALFALFA in connection with women’s dresses. A federal registration, once filed with United States Customs, empowers Customs to block imports that infringe the mark ALFALFA, or are counterfeit ALFALFA dresses. This, again, at no additional cost to you.
If you have any questions about the trademark registration process or want to speak further about protecting your brand, feel free to contact Lucas Vande Sande at the law firm of Hall & Vande Sande via email (lvs@hvsllc.com) or phone (301-983-2500). The HVS team offers free initial consultations and enjoys working with entrepreneurs and businesses of all sizes.
