As an entrepreneur, you understand the importance of establishing a strong brand—one that will create interest early on and eventually develop into an avenue for building customer loyalty and longevity in the industry. While establishing your brand is important, determining how to protect your brand is just as essential. One of the most overlooked, though essential, factors is utilizing federal trademark law to protect your business and brand.
Select a Strong Brand Name
Many entrepreneurs may have decided on the “perfect” brand name and can’t imagine using anything else. Unfortunately, your first choice may not be the right choice, and a prudent entrepreneur should always do their homework.
The first step in executing an effective trademark strategy to protect your brand is to conduct a comprehensive search of the market to ensure your desired brand name is not already being used by another business. This search can start with something as simple as conducting a Google search, or a search of the public database for the United States Patent and Trademark Office, or USPTO. You can also read our blog post about how to conduct a trademark search.
While these searches are often quick and inexpensive, they are likely limited in scope, and may overlook marks that an examiner at the USPTO may cite as “confusingly similar” against your desired brand name. This could result in a rejection of your trademark application. An experienced trademark attorney could conduct a comprehensive search to assess the risk levels associated with attempting to federally register your preferred brand name. This type of search would include a risk-level assessment of marks found in a federal, state, and common law search.
This step is critical in the early stages of building your brand, as it provides an opportunity to make any necessary changes to your desired brand name if it’s already in use by another business. Waiting until your brand is more established could leave you vulnerable to costly issues in the future (i.e., a significant investment has been made to roll out a marketing campaign featuring a name that has been trademarked by another similar business).
Reserve Rights to Your Brand Name with a Federal Trademark Registration
After a trademark search has been conducted and you are confident in your brand name selection, the next step in executing your trademark strategy is reserving the federal rights to your mark. While this is most advantageous to do in the start-up phase of a business, more established brands should not hesitate in beginning this process as soon as possible, if rights to a desired mark have not already been reserved.
For those without established brands at the time of registration, U.S. trademark law allows an applicant who has a bona-fide intent to use the mark to apply for a federal registration before she has launched the business. This allows an entrepreneur to “reserve rights” for the mark while continuing to prepare for the official launch. An applicant can continue to extend her reservation of the rights for up to 36 months, if necessary.
Existing brand owners, and start-ups that have met the 36-month threshold for extensions, are required to prove that the mark is being “used in commerce” as originally indicated in the application. Depending on the type of product or service your business offers, this typically requires a showing that you are actively serving or selling to clients or customers across state lines in the United States.
The date on which you first file with the USPTO will become your priority date. Securing a priority date can provide a significant advantage and an additional layer of brand protection in a particularly fast-paced market where a competitor could swoop in at the last minute to secure trademark rights while you are preparing to launch.
Policing and Enforcing Your Federally Registered Trademark
Once your federal trademark registration has officially been granted, the next step in executing your trademark strategy is policing the rights to your mark. It is up to you, the trademark owner, to police the market to ensure other businesses are not infringing on your trademark.
This can be done in several ways, whether it’s something as simple as conducting a periodic Google search of your trademark targeting your specific market, or relying on an experienced trademark attorney to provide monitoring services of the USPTO trademark database.
Often, a trademark owner will combine these strategies to ensure that a well-rounded approach to policing their mark is in place. The consequences of not vigilantly monitoring your mark can be severe—you could suffer irreparable harm to your trademark through the poor services or quality of a competitor using a similar name. For each third-party using a similar trademark, it also reduces the strength of your own trademark, reducing the scope of protection for your brand, and, in many ways, limiting the value of exclusive rights in the trademark.
How Registered Trademarks Can Protect Your Brand
Whether you are in the process of launching your start-up or you’ve been in business for years, building a strong brand can be overwhelming, but understanding how to protect your brand should not be overlooked or brushed aside. Utilize trademark law to ensure that your investment of time and money is protected. Methodically selecting your brand name and federally registering your mark now, may save you headaches in the future. For assistance in this process, reach out to one of the experienced trademark attorneys at Gerben IP for guidance.