Only 50% of patent applications have the potential of being accepted in a good year in the United States. The application process is long and arduous, and that’s if you’re lucky enough not to go wade through an appeal’s process.
After all the frustration and time spent, the last thing a business owner wants to do is leave the door open to trademark cancellation, infringement, and other legal issues.
You worked hard to get it, here are some tips to help maintain and protect it, so your brand can continue to grow in status and overall value:
Constantly mind and update your trademark registration paperwork
All it takes is an investigation resulting from a claim coming from you, someone else or directly from the Trademark Office itself, to have your registration canceled because inaccuracies come up indicating fraud or deceit on your official paperwork.
In short, any inaccurate data on the paperwork filed with the Trademark Office indicates fraud; whether intentional or not. Consider the case of Hachette Filipacchi Presse vs. Elle Belle: Though the linked study is a tough read for anyone who isn’t an attorney, Elle Belle (respondent) lost their trademark because they initially started out selling women’s clothes when the trademark was accepted, but failed to update their registration paperwork when they started selling men and children’s clothing.
Follow the rules from day one as to how your trademark is displayed
In order to protect your trademarks, you have to always make them visually clear and distinct on your products to stake your claim of ownership. There are also a few other rules to note:
- Brand names should always be displayed, in “quotes” with the designation followed by the word brand and a generic product name beside it directly to the right of it. This lets people know it’s yours and they’re not welcome to use it.
- If not yet registered, use the “TM” or “SM” designation, to protect yourself later if contested (eg. “FUNSTERS™ brand climbing center”).
- Don’t use your trademarked brand names in product descriptors such as packaging or catalogues without the proper designation.
The last bullet point is where a lot of new business owners without sharp trademark knowledge will make. Doing so dilutes your brand and opens you up to a legal argument that the trademarked brand name is limited and has no range.
Don’t use:
“A day at FUNSTERS is just like a day at the park.” – Without the appropriate designation to the right, there’s no ownership implied, despite the use of caps.
Do use:
“A day at ‘FUNSTERS® brand rock climbing center’ is just like a day at the park.” – Use this consistently and never change the practice anytime your name is used, including all guest publications and marketing materials.
Keep records of first-use to protect brand trademarks.
This one is easy to follow and digest. The very first date your brand is used must be permanently recorded, in case you need to go to court over an infringement or challenge claim.
- For physical and digital goods, first-use means when they leave the manufacturing location and land on shelves.
- For service brand trademarks, the first-use date would be when you advertise or sell your services using advertising or a sales document bearing your trademark.
Enforce your trademark against infringement
It’s vitally important to be ever-vigilant at scouring for competitors trying to outright infringe on your brand. It’s not always easy, as there are a lot of companies out there trying to find ways to ride the coattails of established brands, and the sales channels they’ve fought hard and spent lots of money establishing.
These dastardly trademark robbers use many clever tricks to get associated with your brand including the obvious use of your trademark; making subtle changes to the spelling of your brand or product name, associated images, and by imitating the unique color scheme of your marketing and packaging materials.
Just a slight spelling change can help infringers to piggyback on your brand and steal your customers, in most cases without the consumer having any idea they’re not dealing with your company or listening to your company’s opinions.
Consider the example of a leadership firm called “Project Elevate”. A competitor comes along, copies the company’s business model and products, and calls themselves “Project Elev8”. Potential customers and loyal followers might never notice the slight (and catchy) misspelling, causing Project Elevate to lose sales or be somehow associated with the fraudulent infringing company and their practices. You can learn more about protecting your trademark with TMR.
Guard against the use of all brand identifiers associated with your trademark
All words, names, symbols, or devices used to identify and distinguish your brand are trademarked. They cannot be used by other brands or individuals unless you and they have a licensing agreement.
A list of examples you need to monitor for include:
- Logos
- Taglines
- Designs
- Jingles
- Sounds
- Colors
- Characters (eg., Keebler Elf, Tony the Tiger).
File a “Section 15” after 5 years of use
Once you’ve used a mark for 5 years after registration, you’re entitled more protection for your brand, and can make it incontestable under most circumstances. Section 15 of the Trademark Act helps further clarify trademarked brand identifiers when you find yourself in the middle of court, either as a petitioner or respondent. This paperwork is essentially more weighted proof you officially own and use your trademarks.
Closing Thoughts
Trademarks are essential to protect your brand against competitors, and protecting against scrutiny from the Trademark Office and the Trademark Trial and Appeal Board.
Though it should go without saying, always consult an attorney before filing a trademark application or claim, and it’s always advised you source and use a trademark protection service to help you monitor use of all trademarked material.
