Dec 27 | 2011

New Year's Resolutions for Trademark Owners

Since it is that time of year for New Year’s resolutions, we wanted to share some resolutions that trademark owners should adopt.  By adhering to these resolutions, you can do wonders for strengthening your trademark rights and minimizing unwanted risks.  Here you go:

  1. Resolution #1  – I will choose distinctive brand names

We know that it is hard for clients to resist the urge to adopt a name comprised of commonly used words within their industry, not realizing that descriptive trademarks are weak and more difficult to enforce against others using similar, descriptive wording.  The strongest (and best) trademarks are those that are arbitrary (e.g. APPLE® for computers) or fanciful (e.g. EXXON® for oil), because the name itself says nothing about the product.  However, with some patience and a good marketing strategy, an unusual sounding trademark can stand out from the crowd and become a valuable asset to the owner.  Also, importantly, distinctive trademarks are easier to enforce against confusingly similar names, because the infringing user has less leeway to argue that the name should be free to use.

  1. Resolution #2 – I will thoroughly clear my trademarks

Another key to a strong trademark is choosing one that does not conflict with the prior rights of another party.   If the trademark selection process is done with a blind eye as to whether another entity or individual is already using a similar brand, then you risk opening yourself up to potential infringement claims.   The best way to identify and avoid risks is to have your trademark attorney conduct a clearance search to determine whether the mark is available for use and registrable with the U.S. Patent and Trademark Office.   If you work with a branding company, be sure to ask what clearance steps they have taken for any trademarks they propose to you, because many branding companies do not conduct clearance searches of any sort.

The expense associated with conducting a thorough search can deter those with limited resources, but the payoff comes in knowing what risks, if any, exist with respect to a proposed trademark.   Once you are aware of the risks, you will be able to make an informed decision as to whether to move forward with the mark.  A good clearance search will also save you money in the long run.

  1. Resolution #3 – I will use my trademarks correctly and consistently

Another issue that often arises is the inconsistent and incorrect use of trademarks.   Some of the ways this problem can materialize are:

  • Utilizing variations of a word mark or design mark;
  • Referring to your trademark differently each time it is used (e.g., referring to “XYZ software” on the home page of your website and referring to the same software as “XY software” elsewhere); or
  • Incorrectly using trademarks as nouns (“we just released XYZ for sale”) rather than as adjectives (“we just released XYZ software for sale”).

If trademarks are used inconsistently and incorrectly, then over time the strength of those trademarks will be weakened (imagine if McDonald’s famous arch sometimes looked like an upside down V in some states, but the arch we all know was used elsewhere – people would be confused and not necessarily think of McDonald’s).   So, be consistent in displaying your brand, and if your business is large and has multiple departments, divisions, chapters, or is membership driven, then it is even more important to keep everyone on the same page.   Branding guidelines, distributed and used companywide, are highly recommended and encouraged to ensure the proper use and scope of protection for the company’s brands.

Abiding by these three resolutions will not guarantee a headache-free 2012, but they will do wonders in the long run to establish and maintain the strength of your trademarks.

Happy New Year!