A trademark is much more than a symbolic representation of a business. It is imbued with the value a business invests in nurturing and promoting its brand. Each customer that learns to associate a trademark with a business’s work further enhances the mark’s worth. Businesses should treat their trademarks like any other valuable asset. Among other things, that means taking steps to develop the strength of their marks.
What does it mean to say that a trademark is “strong”? The answer to that question comes from the two purposes served bylaws against trademark infringement. The first purpose is consumer protection. A trademark is supposed to reliably identify the source of goods or services that consumers encounter in the marketplace, so that consumers can make informed decisions about them. In their consumer-facing role, trademarks can be considered strong if they are clearly associated in the minds of consumers with the business that produces a given product or provides a certain service.
How this works in practice depends on the nature of the business. A company that makes consumer goods may primarily want to build strength among end-users, perhaps focusing on a specific market segment, while also building awareness among retailers who might carry its products. A business that provides specialized services for a narrow professional market may only be concerned about how its brand is perceived in that small circle. In other words, a trademark’s strength on the consumer side can be a subjective question dependent on a business’s branding goals.
The other purpose of trademark law is to prevent unfair competition from other business that might try to ride the coattails of a successful branding strategy. In this context, a trademark’s strength can depend on the legal steps the business takes to protect the mark from infringers. The legal framework of trademarks rests heavily on consumer protection principles, but its practical use is often commercial in nature. Here strength can come from state or federal registration, a business’s history of defending a mark, and other steps.
To certain extent a trademark can grow stronger simply by being used as part of a business’s branding strategy. But by treating the development of a trademark as a goal itself, and not merely a side benefit of branding, a business can imbue the mark with value while also ensuring that it can be defended against infringers should the need arise. Here are three steps that a business can take to improve its marks’ strengths:
Be systematic in the use of trademarks. Taking the time to develop a branding strategy that incorporates a trademark policyis an important part of strengthening a mark. Having a clear trademark use policy ensures that employees know when and how a mark should be used. Marks that are federally registered should be accompanied by the ® symbol to put others on notice of the registration. A trademark should be used anytime its related products or services are discussed or provided. That means placing it in advertising, promotional materials, and communications. But it also means avoiding using it in inappropriate situations that could tarnish the brand, muddy the mark’s meaning, or erode its value as a mark. Here are some examples:
Use licensing agreements. Whenever a third party will use a trademark it’s vitally important to ensure that their rights are spelled out in a written licensing agreement. Even if the license will be granted at no cost, it can provide a number of protections. The business can specify precisely how a mark can and can’t be used, technical standards (resolution, color), and other factors that are important for branding. A track record of licensing agreements also shows that a business takes its trademarks seriously. It prevents infringers from raising the trademark’s owner’s history of neglect as a defense. Businesses should not be shy about asking for licensing agreements even in friendly circumstances. For example, if a business partner wants to use your company’s logo on a t-shirt celebrating a deal closing, a simple license agreement can cover that use without much fuss.
Be proactive about defending against infringement. Defending a trademark from infringement has a number of important components. First, a business needs to continuously monitor the marketplace for potential new marks that threaten an existing mark’s turf. Because a potential infringement can be hard to detect, many businesses hire outside firms to do this work for them. These firms watch not only registrations at the Patent and Trademark Office, but also electronic and print media, websites, and other potential channels where infringement might be detected.
Catching a potential infringer early is important. If the other partyis earlyin their branding process it may be relativelyinexpensive for them to start again, but if they’ve invested years in building a brand they will have much more to lose. Not paying attention to threats of infringement also gives infringers a strong argument that mark owner has slept on its rights.
An important step for any business that will invest in a trademark is to get it registered. The federal registration process can begin while a trademark is still being developed (a so-called “intent to use” registration). Registration grants numerous important benefits, including nationwide protection within the trademark’s specific class of goods and services, and public notice to others that the mark is claimed. It also grants a presumption of validityin court should an infringement dispute reach that point. Registration also grants owners enhanced damages against infringers, adding extra weight to cease-and-desist letters.
I have spent most of my career in the San Francisco Bay
area and have served Silicon Valley as a patent practitioner
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