How to Protect Your Trademark: 6 Defined Strategies

By Josh Gerben, Esq.

Your trademark is a valuable asset to your business.  It represents your brand and distinguishes you from your competitors.  The legal rights that come with having a registered trademark are essential to your long-lasting success in the marketplace.  Consider how to protect your trademark with these 6 strategies.

Choose a Strong Mark from the Start

Your trademark is often the first interaction a person has with your brand. If chosen well, it should also protect against infringement—both willing and unwilling. The process to choose a strong mark, therefore, should be carefully thought out from the start. Trademarks can be divided into four categories, based on their strength:

• Generic words depict a general product or service. An example of this would be “Headphones” for a brand of headphones. Generic words or phrases are unable to function as trademarks and will never obtain any form of registration from the USPTO.
• Descriptive trademarks “describe” a product or service. For example, “Tremendously Hot Peppers” for a brand of hot peppers would be a descriptive mark. These types of trademarks receive very little protection because they are not truly unique brands.
• Suggestive trademarks simply hint at the product or service being offered. Burger King is an example of a suggestive mark. While suggestive marks may offer more protection, you could run into more trademark disputes, as others may choose to use similar, slightly descriptive language, like Burger Queen or Burger Boy.
• Arbitrary trademarks are commonly used, but not in conjunction with the goods or services provided. An example of an arbitrary mark would be Domino’s. While arbitrary marks are much stronger than both generic and suggestive, they do have the downside of having to educate consumers about the goods and/or services actually offered under the trademark until the brand is more established.
• Fanciful trademarks offer the strongest protection. They are invented terms with no relation to the product or service provided. Verizon, Starbucks, and Nike are all fanciful trademarks.

Fanciful and arbitrary trademarks offer the strongest level of protection against infringement. The downside, however, is that these often require more marketing and advertising to create customer recognition. On the contrary, suggestive marks inherently describe some aspect of the goods or services. They may, however, leave you vulnerable to infringement. Carefully consider which type of trademark is best for your business.

Complete a Comprehensive Trademark Search

Once you’ve chosen your mark, you need to complete a comprehensive trademark search. This should determine if your mark is already in use by another business or individual. It can be disappointing to learn that your mark may infringe on another business, but it is best to learn this before you invest in signage, product labels, or anything else where the trademark is displayed. Moving forward without completing a comprehensive search could cost you significant time and money to rebrand your business in the future.

To protect your mark, it is best to work with an experienced trademark attorney. Many entrepreneurs and business owners have a do-it-yourself approach to business, and while that is a great attribute in general, it’s not recommended to take this approach when completing a trademark search. Typically, trademark disputes do not arise from exact matches, but rather from any mark that may cause a likelihood of confusion with another existing mark. Simply conducting a Google search or consulting a legal website will only alert you of exact matches. The search tools used by trademark attorneys are more sophisticated. Once the search is completed, you should have peace of mind that your business name, logo, slogan, anything you wish to trademark, is not infringing on another business.

Register Your Trademark with the USPTO

After you’ve conducted a comprehensive trademark search, the next step in protecting your trademark is to register with the United States Patent and Trademark Office, or USPTO.  While simply using your mark may give you common law protections, those protections are very limited.  You may have legal rights to the mark, but only locally.  This means you are not protected if someone in another part of the country decides to use the same mark.  You also lack protection, and may even find yourself in legal trouble, if you wish to expand to another area where the mark is already being used.  To get full trademark protection, you must register with the USPTO.

The date on which you file your application will become your national priority date on your trademark (in most cases).  This means that no other business or individual will be able to register a confusingly similar mark after this date.  Waiting to register your mark could force you to forgo your protections if another business or individual registers their similar mark first.  In addition, your trademark attorney will know how to protect your unique mark by accurately identifying the types of goods and services you wish your trademark to represent.  This is of critical importance because your trademark protections will only cover those goods and services listed in the application (or any natural expansion of those goods/services).

Police Your Mark

In order to protect your registered trademark, you must police it.  While the USPTO registers the trademark, they are not responsible for enforcing the exclusivity of its use.  The first step is to begin using the ® symbol once your trademark application has been registered.  This provides public notice to other businesses or individuals that the mark is federally registered and protected.  Include the symbol wherever your trademark is seen, from signs to labels, even your website.  Most people don’t wish to infringe on your mark, and this public notice will dissuade most from doing so.

Others may wish to knowingly use your trademark for their gain.  It is critical to know how to protect your trademark from infringement.  Be sure to assert your rights as a trademark holder to protect your brand and reputation.  Often a cease-and-desist letter is all that is needed to put the infringer on notice.  If that doesn’t work, however, your legal protections as a trademark owner give you the right to file suit against the unauthorized user.  The time and effort put into protecting your trademark, through policing and monitoring, is an important aspect of keeping your brand and business under your control.

Consider Registering Internationally

Unfortunately, the protections you have as a trademark owner in the United States do not apply to other countries. Trademarks are considered on a country by country basis, and any trademark disputes outside the U.S. likely won’t be protected by your federal trademark. If your trademark reaches to another country, whether you manufacture goods in China or sell beach towels in Brazil, you may want to consider learning how to protect your trademark internationally.

According to the United States Chamber of Commerce, places like China and Hong Kong have turned counterfeiting into a multi-billion dollar business. In addition, some countries (like China), grant trademarks on a first-to-file basis. This means that the first person to register your mark in that country will likely be granted the rights, regardless of how he or she plans to use it. Choosing not to register your trademark internationally could cost you in the long run. Without international trademark protections, you may have little recourse against counterfeiters, and eventual expansion into new global regions may be difficult.

The process to file for trademark protection in other countries is not as difficult as it sounds, in most cases. While there is no one application that grants you trademark rights in every country, a treaty called the Madrid Protocol has made the process much easier. If you wish to register with one—or many—of the 90 member countries, you can simply fill out a single application in one language. While the process is streamlined, the Madrid Protocol does not guarantee approval of any application. Each country will review your application and make a determination on whether to approve it. It is important to note that not every country is associated with the Madrid Protocol. To register in a non-member country, you’ll need to do so through its specific trademark office.

Maintain Your Trademark

Your trademark protections are only available if you are continuing to use it. Consistent use of the mark is essential, which means that you are using the same words, design, or logo as were originally registered. Using your mark inconsistently weakens its protections and could be a disadvantage in a trademark dispute. You will also need to document continued use of your mark in renewal filings.

Your trademark will never expire, as long as you continue to use the goods and services listed in your initial application. You will, however, have to renew your registration to maintain your protections. The first renewal occurs between the fifth and sixth year of use, and the following renewal will take place around nine to ten years after your initial registration date. After that, you will need to file a renewal every ten years to continue to protect your trademark. Keep in mind that the USPTO will not alert you to your renewal date as it approaches. The responsibility to renew is that of the trademark owner, and if a renewal deadline is missed, the trademark will be canceled.

Starting a business means you are managing a never-ending list of priorities. Knowing how to protect your trademark should be at the top of the list. Once you’ve chosen a strong mark, completed a comprehensive trademark search, and registered with the USPTO, you can use your mark with peace of mind and the legal backing a registered trademark provides. But to truly protect your trademark, be sure to actively monitor and police unauthorized use, consider international registration, and remember to renew your trademark on time.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.