Your business probably has a well defined budget process and no doubt a sales and marketing plan. But when was the last time you took stock of your trademark portfolio?
As a brand owner it pays every once in a while to step back and ask yourself whether you’re trademarks are working for you. Old brands may have become obsolete and new brands may have been introduced. A periodic evaluation, or “audit” if you prefer a more formal term, helps you identify strengths and weakness of your legal trademark defenses and helps you refocus your resources to help your business grow.
Start at the beginning. Start by creating or updating a list of your trademarks. You might just have more trademarks than you realize because the trademark system in the
To obtain a federal trademark and be granted the privilege of using the R in a circle requires filing an application with the U.S. Patent and Trademark Office – that’s what most people typically associate with a trademark. The beauty of a federal registration is that it grants trademark protection throughout all fifty
State trademarks are usually unregistered and are sometimes referred to as “common law” trademarks. They are created by actually using the trademark on the goods in commerce – state by state. That means if your business is local or regional, someone else could use the same names in another part of the country. That’s why savvy intellectual property owners opt for the federal registrations instead.
Nonetheless, you want to take note of unregistered brand names or phrases that are associated with your core products or services (yes, service marks are available too) because you might consider elevating your legal protection by applying for federal protection. Keep track of when the name or phrase was first used in commerce. Those dates are important for establishing your rights.
The strength of a mark and its eligibility for trademark protection rests with its distinctiveness. Trademarks are assigned by class of goods and must be distinctive to qualify for legal protection. Marks are inherently distinctive if they meet the legal criteria for being fanciful, arbitrary, or suggestive. They are potentially distinctive if they are descriptive, deceptively misdescriptive (such as glass wax), geographic, surnames, or slogans. In the United States potentially distinctive marks are inconstestable after five years of continuous use, during which time secondary meaning has attached to these common words linking the mark to the source of origin.
The key to legal protection is registration of the mark. Failure to secure those legal rights means that it’s possible for someone else to swoop in and scoop your name. Take for example the situation faced by the Yellow Pages telephone book. It was the sole occupant of the yellow page marketing platform until a competitor came along and used the same “yellow page” phrase to launch its own telephone directory. In their hearts the original publisher’s leadership believed they had established a unique market niche that was being unfairly encroached by a competitor.
Legally, “The Yellow Pages” was a descriptive phrase that by itself was not inherently distinctive enough for trademark protection. But over time, through extensive usage, the phrase had acquired secondary meaning that tied the product to a specific source of origin. The name had brand recognition. It was a marketing platform; it was an exclusive and unique space. Unfortunately, that space was legally unsecured. A new player entered the field creating the potential for confusion among advertisers whose advertising dollars the business model was based on.
Don’t think that length of use alone will protect you. It won’t, as B&J Enterprises, Ltd., recently discovered to their detriment. Since 1967 B&J used, but never registered, the phrase “Washington Talent Agency.” Unfortunately, more than 40 years of use and substantial advertising expenditures did not persuade an appellate court to overturn a lower court ruling that a new competitor did not infringe B&J’s trademark.
Identifying what trademarks you have and don’t have is the first step in devising an effective trademark strategy for your business. In part two of this posting we’ll discuss how to synchronize the legal strategy with your business strategy.