Promotional campaigns are all about trademarks, logos and taglines. Most marketing professionals seek to burnish these elements into the minds of consumers. However, given the recent significant increases in the damages awarded for trademark infringement, it is even more critical that marketing professionals have a fundamental understanding of trademark law and the steps they need to take to preserve their reputations and their clients' investments.

Professionals in the promotional marketing industry must play offense and defense. On offense, they must ask:

  • What trademarks can we get?
  • How can we use them?
  • Can we design a mark that not only ensures marketing success, but also becomes a valuable asset of our intellectual property that can be exploited in intriguing and profitable ways?

On defense, they must ask: Does our promotional campaign infringe the trademark rights of others?

Mistakes on Offense

Mistakes on offense are remarkably frequent, even among the most seasoned marketing professionals.

1. Our agency owns a whole portfolio of trademarks that we coined and can make available to our customers.

Just because an agency has "coined" a word does not mean it "owns" that word or any trademark rights to it. Trademark rights arise from use of a mark on goods or services in commerce. Ownership of a federal trademark registration isn't necessary for protection, but a company must actually be using a mark on products or services to have any protectable trademark rights.

2. We own the domain name, so we own the mark.

Registering a ".com," ".biz," ".info" or other domain name does not mean a company owns trademark rights in the mark. In fact, it doesn't even mean the company has the right to use the domain names it has registered. That's because, as noted above, trademark rights are tied to use. Thus, the mere registration of a domain name, without use, is not enough for a company to acquire trademark rights. So while a company may own several domain names, if it isn't using those domain names to offer goods or services, it doesn't own any trademark rights.

3. We coined the term (or created the logo), so we own it.

Unlike copyright law, trademark law does not reward creativity. Instead, it protects consumers against confusion, and it protects companies that have invested significant money, time and effort in developing marketplace goodwill. If someone else has beaten your client to the market with a mark that is "confusingly similar" in appearance, commercial impression, pronunciation or meaning, and covers goods or services so related that consumers are likely to be confused, your client is out of luck.

4. We own the mark for all goods and services.

Even after a trademark is in commercial use for goods or services, or both, an owner's rights in that mark are not unlimited. To the contrary, trademark rights are earned only in relation to the particular goods or services for which a mark is actually in use and any "natural zone of expansion." Thus, unless the mark is one of those very rare breeds that are so famous and in use for such a broad category of goods that consumers would presume even dissimilar products emanate from them, there is no way that any company can "own a trademark for all goods and services" shy of actual use.

Mistakes on Defense

Even the best intentioned marketing campaign can infringe the trademark rights of others. You don't have to intend to infringe to be held liable for damages. To guard against this costly embarrassment, marketing professionals need to understand the importance of analyzing their campaign and obtaining the advice of competent trademark counsel long before a launch. Not all trademark searches are created equal. Nor does the ability to conduct a trademark search ensure the ability to properly analyze the search results and offer good counsel. And a failure to understand the importance of defense can end the game.

This discussion just brushes the surface of trademark issues involved in any promotional campaign. Promotional campaigns offer both great opportunity and costly danger. A successful promotional campaign marketing a protectable mark or tagline or logo can not only educate and convince consumers to buy the product or service, but also establish valuable and long lasting intellectual property rights.

But danger lurks. Given the significant increase in recent trademark damage awards, understanding and taking steps to protect against the dangers caused by a faulty offense or defense may be a key both to your survival and, potentially, to the financial viability and survival of your client as well.