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.
Defining what it means for a trademark to be strong
What does it mean to saythat 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 reliablyidentifythe 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 companythat 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 carryits 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.
Steps for strengthening a trademark
To certain extent a trademark can grow stronger simply by being used as part of a business’s branding strategy. But bytreating 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 strategythat 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 federallyregistered should be accompanied bythe ® 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, muddythe mark’s meaning, or erode its value as a mark. Here are some examples:
- Registered marks should not be used in connection with goods or services that aren’t covered byits registrations.
- A mark should always be used as a mark, and not in a waythat might risk it becoming a generic term (i.e., “Use Kleenex brand tissues to wipe your nose,” is stronger than “Use Kleenexto wipe your nose.”).
- Take steps to ensure that a mark doesn’t appear in connection with things that don’t represent the company well, whether that’s products that don’t meet the company’s qualitystandards or social movements that don’t reflect the company’s values.
Use licensing agreements. Whenever a third party will use a trademark it’s vitallyimportant 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 friendlycircumstances. 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 earlyis 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.