Be A Brand Boss: Maintain Your Trademark Registration Like The Boss You Are.

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BE A BRAND BOSS. MAINTAIN YOUR TRADEMARK REGISTRATION (LIKE THE BOSS THAT YOU ARE.)

BE A BRAND BOSS. MAINTAIN YOUR TRADEMARK REGISTRATION (LIKE THE BOSS YOU ARE.) WRITTEN BY ANGELA GRAYSON, CIPP/ US CLP

FOUNDER'S FOLLIES/PRECIPICE SPECIAL EDITION

Brand-building can be a fun perk to owning a business. I’m in the middle of a new marketing campaign, and I’ve been kneedeep in designing all sorts of marketing pieces (fun, not fun). Establishing trademark rights in a brand is relatively uncomplicated. When you use the mark in connection with selling goods and services, voila, you have created a trademark. Like most things in the law, however, there can be complications.

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Details such as timing, use, and geographic

Sometimes, trademark protection which

scope can cause hiccups if proposed brands

becomes registered is very broad, and

aren’t searched and subsequently cleared

sometimes the protection sought and received

through a legal opinion. So, to alleviate various

is very narrow. If your registered trademark is

risks associated with building brands, I usually

limited to a style of font, color, punctuation,

suggest my clients consider a federal

slogan phrase, etc. then you should use the

trademark registration. Obtaining a trademark

mark accordingly. People are notorious for

registration at the United States Patent &

changing things up in a way that is ‘off-brand’

Trademark Office is perhaps the most

from their registration. Doing this can make it

predictable way to establish trademark rights.

difficult to enforce the mark in court.

The process is not without a few frustrations, but I think well worth it in the end. Clients are

Monitor usage.

very excited to receive their trademark

Monitor for potential usage of your mark by

registration from the USPTO, but that’s not the

other companies. Monitoring usage can be a

end of it. To get the most value from a USPTO

little tricky to execute. While it’s pretty easy to

registration, there a few things you will need to

set up a Google alert or work with your lawyer

do.

to monitor similar marks at the USPTO, once

Understand the register.

the potential infringement is detected, you’ll

Know which register on which your mark is

trademarks can be expensive, and without a

listed. Trademarks are registered on either the

plan to pay for the legal expenses, enforcing

Principal or the Supplemental Register. The

the mark could prove difficult.

Principal Register provides a presumption of

want to do something about it. Enforcing your

validity and ownership. When a mark is

Provide notice.

registered on the Supplemental Register, your

Give the public notice, either constructive or

mark is not presumed valid, nor are you

actual. Giving the public constructive notice

presumed the owner. When your mark is on the

can be as straightforward as using ® with the

Principal Register, after five years of use, the

brand or providing written notice on printed or

owner of the mark can file documentation at

digital content that states the subject marks are

the USPTO asserting the mark is incontestable

“Registered trademarks of Company X.” Actual

(which means the mark can not be challenged

notice can be given by directly communicating

on certain grounds).

with the alleged infringer. Keep in mind,

Be consistent.

without notice, you will not be able to enforce

Use trademarks in accordance with your

your brand adequately.

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Pay fees. Pay maintenance fees. This is tremendously important. US trademark registrations, like some patents, require the payment of maintenance fees to keep the mark alive and enforceable. A trademark owner will need to pay fees and file USPTO affidavits and declarations the first five years, in another five years, and every ten years thereafter. Nothing is free, right?

Last word.

Establishing a trademark is usually one of the first intellectual property rights many companies pursue, and obtaining a trademark registration can be especially sweet. But as the saying goes, ‘with great power comes great responsibility.’ Registered trademark rights require an understanding of the nuances of the Principal and Supplemental registers, notice, use, monitoring, and fees. Neglecting any of these actions could put your hard-won mark at

“A trademark owner will need to pay fees and file USPTO affidavits and declarations the first five years, in another five years, and every ten years thereafter. Nothing is free, right?”

risk.

PRECIPICE IP | TECHNOLOGY LAW. WWW.PRECIPICEIP.COM/PURCHASE Protecting products, brands, designs, & data from idea to launch. To learn more about the value of legal opinions in new product planning, visit www.precipiceip.com/puchase

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The information in this article is informational only and does not constitute attorney advice, nor establishes an attorney-client relationship.

The information in this article is informational only and does not constitute attorney advice, nor establishes an attorney-client relationship. (s) @precipip (w) www.PrecipiceIP.com

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