Eight Trademark Protection Strategy for Future-Proofing Your Brand
In today’s fast paced business world, brands are more than just names. They are the most valuable asset of a company. A strong brand identity helps a business stand out, builds trust and drives growth. With the digital landscape constantly changing and increasing competition, it is important to protect your brand. In fact, according to a UnitedLex 2024 IP Impact Study, a majority of law firms and in-house respondents expect IP filing activity to increase, driven by growth in emerging tech and AI, with organizations eager to protect their brands and inventions.
This article delves into eight essential trademark protection strategies to help navigate the legal complexities and future-proof a brand. Eight
trademark strategies
1.
Trademark Search
A trademark check determines whether a proposed trademark is available for registration or use, and if it would conflict with an existing mark. It involves searching various databases, including the USPTO database and other databases to identify any existing trademarks that are similar to the proposed mark and used for related products or services.
Trademark searches require domain expertise, including a thorough understanding of trademark laws, country specific analyses where databases may not be available, and analysis of search results based on criteria such as similarity in meaning, in appearance, in sound. Many businesses hire IP experts to help with trademark searches because of the complexity.
Trademark Registration
A trademark is protected as soon as a business uses it in commerce. This is known as a common law trademark. These are rights that are restricted to a particular geographical area and are not enforceable outside of this area. For example, a pizza shop in Brooklyn, New York can only use its name exclusively in Brooklyn.
While a common law trademark is enforceable in state courts, a registered trademark with the U.S. Patent and Trademark Office (USPTO) has greater trademark protection in federal courts than an unregistered mark, and is one the most effective ways to protect your trademark. It makes it easier to prove that a business legitimately owns the trademark, and provides “evidentiary presumption,” the legal assumption that the registrant has the right to use it.
Federal trademark registration provides nationwide protection and additional benefits, such as the ability to use the (r) symbol and the right to sue for infringement.Trademark protection does not apply to other countries; trademarks are considered on a country by country basis, and trademark disputes outside the U.S. likely will not be protected by a federal trademark. It is important to register trademarks in other countries if a business’s brand extends into another country. For example, if they manufacture medical devices in China, or sell beach towels in Mexico. Domain name protection
A domain name can qualify as a trademark, and prevent cybersquatting and domain name infringement, if it is used in connection with a website that offers services to the public; however, it typically incorporates the business’s trademark.Not all commercial domains get trademark protection. Strong ones (unique, used for business, like amazon.com, which directly reflects the company’s brand name “Amazon”) fight cybersquatting, but generic ones (e.g., dictionary.com, pets.com) offer less protection.
4. Trademark monitoring
While USPTO registers trademarks, they are not responsible to enforce their exclusivity. Through regular trademark monitoring, the process of continually looking for third-party use of a brand’s trademarks, companies can detect any infringements.
Businesses can outsource this process to specialized IP service providers that automate trademark monitoring using a variety of databases, rather than hiring a dedicated team. Businesses can use trademark monitoring to be alerted of new trademark applications which may cause a conflict. They also gain insight into the activities of competitors and receive detailed information about the conflicting marks. Online marketplace monitoring
Online marketplace trademark monitoring involves searching for unauthorized uses of a brand’s trademarks on the web. Social media (including private Facebook stores), ecommerce websites, piracy including unauthorized downloads links and live streaming and domain names are some of the most common sources.
Offline Market Monitoring
Offline Monitoring involves actively monitoring physical shops, distributors, manufacturing plants, and other supply chains to identify and address any counterfeiting or unauthorized trademark usage. Offline monitoring can be especially useful to protect trademarks on gray markets. These are places where products are sold outside the authorized distribution channels of the original manufacturer or trademark holder. Rolex watches, for example, may be cheaper in certain countries because of lower taxes or different pricing. Gray market products can be significantly different from authorized products, for example in terms of packaging, quality, or warranty. This can cause confusion among consumers and dilute the brand image.
Trademark enforcement
Trademark enforcement is a critical component of trademark protection. If a company fails to enforce its trademark, its brand can be diluted, it can lose revenue and market share, and it can lose its rights to the trademark altogether.U.S. Trademark, anti-counterfeiting and unfair competition laws give businesses the right to take action against gray market and counterfeit goods, as well as other trademark violations. To enforce a mark, the trademark owner sends a cease and desist letter to the alleged infringement, outlining their claims of infringement and demanding that they cease the infringing activities. If the trademark owner is unsuccessful, they can file a lawsuit in order to protect their rights. Other enforcement actions include takedown notices and raids.
8. Trademark maintenance is a vital part of trademark protection. It ensures that a trademark registered remains valid and protected through active use in commerce. Maintenance also requires period filings with the relevant trademark office to demonstrate continued use, preventing the loss of trademark rights due to non-use or failure to comply with renewal deadlines.
Taking a strategic approach to trademark protection
