Too many businesses devote considerable attention to developing new brands and trademarks to maximize market effect without paying sufficient (or, sometimes, any) attention to the legal implications of using new marks in commerce. The result often is that what appeared to be a valuable mark ends up being either un-protectable under U.S. law or, worse, already owned and used by another person or entity. The following 3 steps can greatly help to avoid legal exposure and other problems that can be associated with new marks:
1. Screening and Legal Review. Some businesses rely solely on informal trademark searches conducted by employees in the trademark-registration database of the U.S. Patent & Trademark Office (“USPTO”) in order to determine whether a trademark is “available.” However, such searches should be used only to help identify clearly conflicting marks. They cannot return information regarding any potentially conflicting third-party marks that have not yet been identified in any trademark applications or registrations filed with the USPTO. In order to minimize exposure related to potential third-party infringement claims, a professional screening search including uses of proposed marks in state business filings, Internet domain names, and web pages, among other sources, should be ordered before a proposed mark is used publicly, especially if significant marketing dollars are going to be used to promote the new brand. In those critical cases, it also is advisable to request a legal review of proposed marks to determine whether and when a proposed mark likely would be eligible for trademark protection and also whether a proposed mark falls within the scope of any restrictions on the company’s ability to adopt new brands or trademarks (such as contractual restrictions that may be included in agreements with other parties).
2. Registration. Unless a proposed mark is expected to be used for only a single campaign of limited duration, the trademark should be registered in order to protect the company’s rights to the mark and also to mitigate exposure related to disputes with third parties who may challenge the company’s right to use the mark. Registration typically takes one of two forms:
- “Official” registration with relevant trademark registries. This is the stage that many often identify incorrectly as “trademarking” a new logo or phrase. It is important to remember that trademark rights arise as soon as that new logo or phrase is first used in commerce as a trademark.
- “Informal” registration is available via sources such as domain name registries and social-media user names and/or page names. Such registrations do not have any inherent, legal effect, but they can be important to show when the company first started using a mark and also to limit the ability of potential trademark “squatters” to complicate the company’s ability to use its marks freely for marketing purposes. Companies should balance the importance of new mark and the likelihood of potential infringement by third parties against the administrative burden and expense of informally registering that mark with one or more of the numerous Internet service providers that might be relevant to the company’s marketing plans.
3. Monitoring. After a mark is registered and in use, it should be included in a trademark-monitoring program in order to help identify unauthorized, infringing uses by third parties. Like screening searches, trademark monitoring also may be performed at different levels of intensity. For a company’s most important marks, comprehensive trademark-monitoring reporting should be ordered through a vendor with access to robust research tools. As with the deepest screening searches, the scope of such monitoring typically includes trademark applications and registrations at various state, U.S. and international registries along with uses of proposed marks in state business filings, Internet domain names, and web pages, among other sources.