Trademarks don’t exist in a vacuum. Their purpose in the business setting is to protect your company and your brand names as well as facilitate your marketing efforts. Once you figured out what trademarks you have, the next step is to compare them to your products and services and ask yourself the following six questions.
1. Are all of your trademarks, both registered and common law, currently in use? If not, save money on maintenance fees by allowing a registered mark to be abandoned. It also weeds out the non-performers in your portfolio.
2. Are any of your common law trademarks worth elevating to the level of a federal registration? Periodically examining that option will help protect your marketing platform and avoid the situation faced by The Yellow Pages and B&J Enterprises discussed in part one of this series.
3. Is your business international? If so, you may want to consider trademark protection in the countries you’re doing business in. Remember, trademark protection grants exclusive use of certain words and phrases to identify the source of origin of goods and services. It allows you to keep competitors from capitalizing on the good will generated by your marketing efforts.
4. Are all of your brands protected by trademark? Perhaps the better question is: do all of your brands need to be protected by trademark? Brands are a lot like family jewels, there are those that are valuable and then there are the trendy costume pieces that have limited appeal.
Which brands are your diamonds? Those are the brands that deserve trademark protection because those are the ones that contribute the most to your bottom line and are essential to business sustainability.
However, diamonds in the rough should not be ignored. They can be worthy of protection too, as Pets.com one of the darlings of the tech stock bubble discovered. Pets.com, you may recall featured a cute talking sock puppet in its advertising. The Pets.com business model was short lived, but in the end, the trademarked the sock puppet turned out to be its most valuable asset.
5. Are there opportunities for brand extensions? Brand extensions provide opportunities for trademark families. There is definitely trademark strength in numbers as McDonald’s restaurants and their usage of the famous “Mc” brand prefix well knows. McDonald’s is an example of trademark law protection buttressing beautifully executed sales and marketing plans. Every trademark registration using the “Mc” prefix, from McChicken to McFlurry to McGriddles, adds to the McFamily and is another fence post cordoning off the “Mc” brand platform from competing uses.
6. Do all of your products include a proper trademark notice? Without notice you may not be able to sue for infringement and it will be more difficult to enforce your trademark and stop counterfeiters.
Once you synchronize your trademarks with your brands and your marketing plans you’ll be able to leverage that legal protection to create greater value. Consistent usage combined with aggressive enforcement, for example, makes the family of McDonald’s trademarks among the most famous and valuable in the world. Those who try to use the same prefix without McDonald’s permission will find themselves in McTrouble.
It’s a technique you can adopt for your brand names too.
Don’t have any trademarks, but want to explore the options? Check with your lawyer or one of the many online services such as Legalzoom.com.