Investing in your Brand.
Building and developing a brand is an exciting time. Businesses spend a lot of time strategizing about what will effectively convey the desired message to clients. Does it convey the business’s traditions and values? Cutting-edge technology? Does it break through the noise and attract positive attention on overcrowded product platforms such as Etsy, Amazon or even the local grocery market shelf? Perhaps the business is launching a new product or rebranding itself. In each of these situations, the fate of the product or the brand itself, may rest on the consistency and reliability of the brand.
Substantial investment is required to develop a brand. Measures should be taken to ensure that that the resulting brand is not hijacked or diluted. If another business begins to use a logo, catch phrase, or name similar to your logo, the adverse impact on the perception and value of your brand can be significant.
There are several ways to prevent this adverse impact and protect your brand. This article explores one of those methods: trademark protection.
What is a trademark?
A trademark is a mark used to identify goods with a specific source. It can be words, symbols, design logos, catch phrases, or any combination. Although a less familiar term, a servicemark is similar to a trademark, except that it is used in association with specific services (such as website retail services, as one example).
Businesses spend significant capital building a reputation for quality, consistency and reliability so that when a customer sees a mark, they can expect the same quality, consistency and reliability in the goods or services purchased.
How to create a trademark?
Generally speaking, if a business develops a unique mark in connection with the sale of its goods or services, it has likely already created a right in that mark – a legally protectable right. However, the scope of that right is generally limited to where the product is sold. If a business develops a unique logo in Eugene, Oregon, and only sells its product in Lane County, it may not be able to prevent the same or similar mark developed independently in Portland, Oregon, from being used. So, what are the business’s options should it potentially want to expand to other markets and protect its brand in the process?
Some states allow state-wide registration of trade or service marks. In Oregon, the Oregon Secretary of State manages these applications. Successful state-wide registration in Oregon permits a business to enforce its mark state-wide, which includes the ability to obtain a court order preventing another party from using its mark. It also entitles the owner to damages for any infringing use. However, registration in Oregon does not prevent the same or similar mark developed independently in Seattle or San Francisco from being used. What are the options in that case?
Depending on a number of factors, including the scope of where the products will be sold, some businesses consider federal registration with the United States Patent and Trademark Office (USPTO). We have all seen the ® sign on products. That symbol is a sign of successful federal registration. Registration with the USPTO confers many benefits, such as nation-wide enforcement rights; incontestability of first use of a mark after a statutory period; and entry in the federal trademark database. Entry on the database allows others (including the USPTO) to be on notice of the registered mark if a confusingly similar mark applies for registration with the USPTO.
While USPTO registration provides protection for a mark as used on the specific goods and services associated with the registration, it may not prevent others from using an associated word under all circumstances. For example, while Delta Airlines may have a federally-registered trademark for “Delta” as used in association with airline services, such registration does not prevent a company from selling faucets under the same name. The products or services are substantially different.
Can anything be trademarked?
Not every mark is eligible for registration via any of the above methods. Among other requirements, a mark that “merely describes” a product is ordinarily not eligible for registration. Neither is the use of surnames. For example, a paper distribution company called “Smith Paper Products” would have a difficult time registering its name as a trademark because of the surname use, and the fact that “paper products” merely describes the company’s goods sold. Therefore, from the start care should be taken when developing a name, slogan or design if the creator intends to protect that interest in the future.
What Happens after a Trademark has been Registered?
After registration, a business may desire to take steps to enforce its exclusive use of the mark. Legal advice may be sought regarding an appropriate strategy. The business may retain counsel to send cease and desist letters, to initiate litigation to prevent further use of the mark, and/or recover damages for its use. The business may also seek to negotiate a license arrangement or a resolution regarding use of the trademark, depending upon the circumstances.
A brand is an essential and valuable, yet far too often unprotected, asset of successful businesses. Trademark protection is one way savvy businesses maintain control of their brand and retain the reputation they have worked so hard to achieve.
This blog is made available by Gaydos, Churnside & Balthrop, P.C., for educational purposes, and to give general information and a general understanding of the law. Nothing contained in this blog post should be construed as to provide specific legal advice. By using this blog you understand that no attorney client relationship has been created between you and Gaydos, Churnside & Balthrop, P.C. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney in your state.