Top 10 Ways To Protect Your Trademark

A trademark or service mark can mean everything to a business:  your brand, your image, and what customers think of first with respect to your goods/services.  It’s what distinguishes your product from Brand X.  But how do you protect it from the competition?  To help you avoid the fate of the many who neglect their mark’s protection—and live to regret it—here are ten favorite tips from the Karnopp Petersen e-TIP team:

1. Choose a unique mark:  Trademarks should distinguish the source of a good or product. Common names of a product or service generally don’t qualify for protection… be creative!  Invent a word (KODAK), or choose an arbitrary mark that has nothing to do with the product, such as Apple for computers (which don’t grow on trees, sorry).  Strong, distinctive marks not only strengthen your legal protection but also attract client attention.  This concept applies to even brick and mortar business, but you can learn more about the power of quirky names (especially in the digital era) here.

2. Register your mark: Registration with the US Patent and Trademark Office (USPTO) may be your best bet.  State registrations are available, but just about every business—even local—should at least consider the goldmine of benefits that come from national registration.  Here are just a few that could save your mark (or even your business?) in the not-so-distant future:

    • National registration creates a legal presumption that you own the mark.  This can be both a defensive shield and offensive sword against a copy-cat competitor!
    • The USPTO bars the registration of confusingly similar marks.  This can help stop troubles before they start, and maintain the uniqueness of your mark.
    • Registration provides notice of your claim to the mark to those outside your trading region.  And you get the legal right to use that cool little ® symbol, too.

3. Use your mark publicly, “in commerce:”  In the US, rights to a trademark generally are triggered by use in commerce.  So here’s calling all ye startups:  just because you’re ready to launch and have your mark all over goods you haven’t shipped yet, doesn’t mean you’ve perfected your rights with “use” in commerce.  (An evil employee could give your mark to a competitor … if they use it/make a sale first, you may have a real problem on your hands.)  Place your mark where it is visible on products and packaging.  And make a sale.  Widely available marketing materials, including your website and social networking websites, can help towards establishing use, too—if done right (think proximity to a picture of the goods, and a means to order them).  But before you get too confident about your protection based on first use, see Tip No. 2, above:  it’s typically best to register first (an “intent to use” application) or shortly after beginning use in commerce.

4. Keep examples of your early “use,” with proof of date:  A dispute over a trademark often boils down to who can establish that they used the mark in commerce first.  The best way to avoid or prepare for such a dispute?  Keep time-stamped examples of your earliest use of the mark.  For example, a photo of a shipment of trademark-labeled goods with a copy of a time-stamped email receipt could be priceless evidence down the road.

5. Use a notice marking:  Placing a notice marking (such as TM or ®) after your trademark gives notice to others:  back off, this intellectual property is mine.  It also helps to distinguish the mark and draw the eye of readers.  Use TM for trademarks or SM for service marks when you have not registered your mark with the USPTO, and ® when you have.

6. Distinguish your mark:  Your mark should be a unique, let it shine!  Make it stand apart from any surrounding text.  Make sure it draws the eye and is distinguishable:  think all caps, color highlighting, bold/italics, different fonts, etc.

    • Yes!  A-Plus example:  “Our new TRADEMARKTM beer is the bomb!”
    • Not so good:  “Please buy our new trademark beer.  Pretty please.”

7. Use your mark correctly, to describe your product:  A trademark should be used as an adjective or descriptive noun.

    • Better:  “Our TRADEMARKTM rockchuck feeder dispenses all the tasty treats a yellow-bellied marmot could want!”
    • So-so:  “TRADEMARKTM keeps rockchucks comin’ back for more.”

For our part, we hope disputes about how the term “Cronut” (croissant/donut) has been used don’t stop them from coming to Central Oregon. And yes, we like rockchucks but don’t necessarily endorse feeding wild animals.

8. Be consistent:  If you change the spelling of your mark or begin to abbreviate, you could be undermining you claim to the mark.  Always use it as a separate adjective or descriptive noun that is spelled out in full.  Avoid modifying it into a possessive or plural form, too.

    • Yes!:   I could go for some OREO cookies, please.
    • No cookies for you:  Give me some OREOS.  (That modifies the mark!)

9. Continuously use your mark:  If you stop using your mark for a period of time, you are no longer placing others on notice of your claim to the mark.  That can cause you to lose your rights!

10. Sleep with one eye open:  It’s a jungle out there.  If you want to keep your mark protected, you need to watch for thieves—and take steps to address any misuse.  Turning a blind eye to a smaller incident of infringement (that doesn’t seem like a real threat to your business) could hurt your chances of stopping a bigger bully who can really do damage!
Periodic searches for infringing use can help.  For a recent example of controversy around the duty to monitor/defend your mark, read about the Black Eyed Peas frontman here.