This article, written by attorney Brian Thomas, was originally published by Business NH Magazine and can be found here.
You develop an innovative product or service and market it under a strong trademark. Before you know it, your brand gains traction with devoted customers and steady revenue. And then sales unexpectedly fall off. Why? A copycat starts selling a similar offering under a similar trademark, confusing your customers and stealing your hard-earned sales. What should you do?
The best strategy is to prevent bad actors from hijacking your brand in the first place by registering your trademark with the United States Patent and Trademark Office (USPTO). This provides strong protection for minimal investment. Use of the ® symbol deters would-be infringers by providing you with priority rights to the mark in all states, an entry in the USPTO database that is used to check mark availability, certain advantages if forced to sue, and a valuable asset that you can license or sell.
Federal registration is also a prerequisite to enrollment in vital brand enforcement programs such as Amazon Brand Registry, and many social media providers require proof of registration before taking down content that infringes your mark. You can also record registered trademarks with U.S. Customs and Border Protection, which helps that organization seize counterfeit products that bear your mark.
Effective selection, use, and registration of your mark requires careful consideration of various factors. Although not an exhaustive list, businesses should consider the following issues, at a minimum, before adopting and protecting a mark.
Your Business Entity Name is Not Automatically Protected as a Trademark
A common misconception is that the name under which you incorporate your business is automatically trademarked. A business entity’s name is not automatically protected as a trademark. To protect the entity name as a trademark, the business must at a minimum use that name in connection with providing its goods or services and it must register the mark with the USPTO to obtain the benefits of
federal registration.
Confirm That Your Trademark Does Not Infringe an Existing Brand
If a brand owner launches a product or service under a trademark that is similar to a competitor’s, use of that mark may be infringement. If the existing mark is registered with the USPTO, it may also prevent another brand owner from registering its similar mark. The new mark does not need to be identical to the existing mark to infringe. Instead, the marks only need to likely cause confusion.
In a recent example, one company was prevented from registering the mark ACUITI for cancer screening and genetic testing software because, according to the USPTO, it caused a likelihood of confusion with the previously registered mark QIACUITY for similar services.
Likewise, a new mark can infringe a registered trademark for a different product or service. For example, the USPTO refused to register the mark UGLY DOG SALOON for a bar and restaurant on the basis that it was likely to cause confusion with the near-identical mark UGLY DOG for distilled spirits and alcoholic cocktail mixes. According to the USPTO, restaurant services and distilled spirits are in some cases sold by a single source, increasing the chance of confusion.
Avoid Marks That are Descriptive of Your Products and Services
Brand owners may not be able to protect or register a mark that is “merely descriptive” of the product or services. For example, a company was prevented from registering the mark WORKOUT WALKER for footwear and various apparel. According the USPTO, because those goods include walking shoes used for exercising, the mark merely described the goods’ purpose. In a different matter, the USPTO denied registration of the mark LOW CARBON BEEF, finding it to be merely descriptive of the beef processing services provided under the mark.
Steer Clear of Misdescriptive Marks
Brand owners should also avoid trademarks that suggest a product includes an ingredient that it does not. For example, the USPTO denied registration of the mark FLAT IRON TACO for tacos. According to the USPTO, the mark was “deceptively misdescriptive” because it would lead consumers to mistakenly believe the product contained flat iron steak, when it did not.
Decide Which Trademarks to Protect and Where
A brand owner must also be strategic about which trademarks to protect: the predominant mark under which all of its goods and services are sold, the mark under which a specific good or service is sold, or both? A mark consisting only of words, or a mark with design elements like color, font, or a logo? In the U.S. only, or also in the foreign markets in which the company also does business? Available budget should be factored in. And you will need to know what other marks are already in use by others, including marks already registered with the USPTO and other foreign trademark offices. This is to avoid adopting a mark that infringes on an existing brand.
Act Early and Rely on Expert Guidance
Unregistered trademarks are susceptible to being commandeered by competitors. Choose an enforceable trademark, verify that it does not infringe on any existing brands, and apply to register the mark with the USPTO as soon as possible—ideally before you launch the mark. Rely on an experienced trademark attorney to guide you. Doing it right the first time can save you a lot of grief down the road.