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company has a legal team to handle the applications processes, your marketing team should have a working knowledge of what it takes to secure the safeguards. A copyright protects original, creative works of authorship, such as writing, music and works of art—and you can find information on how to secure and protect a copyright for your work in “Know Your ’Rights,” published in the August 2014 issue of Marketing News. A trademark, meanwhile, is a word, phrase, symbol or design that identifies and distinguishes the source of the goods of one party from those of others, according to the United States Patent and Trademark Office. A trademark protects logos and the names of products and services, as well as non-traditional product attributes such as sounds, colors, shapes and the style of your product packaging. Here we offer legal experts’ insights on how to register a trademark and how to protect it in the global marketplace.
Securing Safeguards Legal experts help you get up to speed on how to register a trademark and protect it globally BY CHRISTINE BIRKNER | SENIOR STAFF WRITER
cbirkner@ama.org
I
nnovation is the name of the game these days. To compete, companies have to keep their offerings fresh—and protect their offerings’ unique attributes or ideas from being intentionally or unintentionally
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“borrowed.” The risk of copyright and trademark infringement is just part of business, of course, so it’s worth the effort to get the proper protections in place to guard your company’s intellectual property. And even if your
Getting Clearance Securing a trademark should be one of the first steps in the development of new products or services, says Michael Justus, a trademark and advertising attorney at Washington, D.C.-based law firm Katten Muchin Rosenman LLP. “As soon as marketers come up with a new brand, product name or logo, that’s the time to get legal involved. If you wait too long in the process, fall in love with the brand and take steps to launch it and create your collateral, and then go to legal and find out that the mark is already taken, it’s a waste of resources.” Once you have a product name in mind, make sure that another company doesn’t have conflicting rights. First, perform a preliminary search on the U.S. Patent and Trademark Office’s website to see if there are obvious conflicts, says Catherine Farrelly, partner and co-chair of the trademark and brand management group at New York-based law firm Frankfurt Kurnit Klein & Selz PC, who advises brands on intellectual property matters. If there are no conflicts, an attorney will need to
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perform a second-round search by purchasing a report from a commercial vendor, which cross-references trademarks in each industry, for about $700. “[The cost] is a pittance compared with what you’d wind up spending in litigation, and having to rebrand under duress, if there’s a threat of infringement,” Farrelly says. If you’re launching a product globally, have your legal counsel conduct similar clearance searches in those markets, Justus says. “There are horror stories of people who launched big, global brands and then found out that they couldn’t get the rights to them. It’s a huge headache. Millions of dollars end up having to be paid to try to buy rights from people in foreign countries.” Filing and Renewal Marketers can file for trademarks on their own through the U.S. Patent and Trademark Office’s website, but enlisting the services of a trademark attorney could help you avoid paperwork headaches, Farrelly says. “A lawyer will tell you the type of application to file, and how to describe your goods and services so that your application is less likely to receive an office action, where you’d have to revise the form.” File trademark applications under the corporate entity rather than under individual names because if someone files it in his own name, he could be mentioned individually as a party in a trademark infringement action, she adds. If you have a product idea that you’re not quite ready to launch, you can file an “Intent to Use” form through the U.S.
Patent and Trademark Office, which reserves your trademark for up to three years. Before officially registering a trademark, some companies add the trademark symbol after their product name as a sign that they’re claiming trademark rights, or as a temporary protection before registering the mark, and that’s an OK practice if you have to rush a product to market before a trademark application can be processed. “It’s planting your flag,” Justus says. “You’re letting the world know: ‘This is our proprietary trademark. Don’t adopt this mark or something similar, or we’ll come after you.’ ” The trademark can be replaced with the registered symbol after the trademark is officially registered. Although you have some rights if you use the trademark symbol, full registration gives you nationwide protection in the U.S. and protects you if you have to sue a competitor for trademark infringement, Justus says. “In a perfect world, you’d want to register all of your brands. Registration becomes very important if you ever have a dispute.” Trademark registrations in the U.S. technically are good for 10 years, but between the fifth and sixth year of registration, you must file a “Declaration of Use” form with the U.S. Patent and Trademark Office to prevent your trademark registration from expiring. If your mark has been in continuous use for a five-year period, you also can file a “Declaration of Incontestability,” which narrows the grounds on which a third party can challenge the validity of your registration, Farrelly says. “It gives you
“It’s planting your flag. You’re letting the world know: ‘This is our proprietary trademark. Don’t adopt this mark or something similar, or we’ll come after you.’”
additional protection and strengthens your trademark rights when you make that filing.” You also must register your trademark in each country where it will be used, she says. “If you have rights in a particular country, it generally doesn’t give you rights in any other country. If you have a federally registered mark in the United States, it doesn’t give you any rights in Canada.” To protect your trademark, you can use services to monitor new websites and global trademark filings or do on-theground detective work, Justus says. “Smaller companies can rely on their people at trade shows. They may see that one of their competitors has started using a brand similar to theirs, and they can decide whether to take action on it.” Social Media Protections Be sure to register unique domain names and Twitter handles for your product, Farrelly says. “Register them as early as possible because once you issue a press release, it’s very likely that a third party will gobble up any desirable Twitter handles or domain names.” Justus expects more companies to start asserting trademark rights on hashtags and social media handles in the future. “People file trademarks on hashtags, but I’ve never seen a hashtag successfully enforced against someone else in court,” he says. “But that could change. If you come up with a clever hashtag for a company, wouldn’t you want to stop other people from using it?” Educating yourself on the basics of trademark protection will help you protect and grow your brand name, Farrelly says. “If you aren’t sophisticated on trademark matters, you could create a brand that ends up embroiling your company in litigation that could defeat all of the profits you ever make on the product.” m •org
MICHAEL JUSTUS, KATTEN MUCHIN ROSENMAN LLP
To learn about issues specific to copyright law, check out “Know Your ’Rights” from the August 2014 issue of Marketing News at AMA.org/MarketingNews.
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