Published on February 1, 2017; Updated June 1, 2022
Your brand may be your most valuable asset. Are you protecting that asset? You can take steps yourself to protect your brand and there are some steps that are best left to experienced trademark counsel to handle. The following information is intended to serve as a guide in helping you protect your brand. If at any point in the process you have questions, please don’t hesitate to contact John Halski.
1. Choose A Strong Name (choose a distinct name and do preliminary browser searches yourself to avoid unnecessary professional searches)
Start with choosing a “strong” mark. Do your own preliminary searches and then have comprehensive searches performed by attorneys or third-party search companies to see if there are any confusingly similar marks.
Even the third-party search company results should be reviewed by counsel with an opinion letter. Doing a professional search is like buying insurance. If you have a great search, there is less risk of spending money on marketing, signage, websites, etc. only to have to start over. Also, if you have a professional search, it is hard for a prior user to claim damages for bad faith. A search should be of U.S. Patent & Trademark records, searches of other relevant jurisdictions, domain names, and broad browser and trade group searches at the least.
2. Check Domain Names (you can do these searches and filings)
You should check availability and file for the domain names for your marks including for multiple extensions, for misspellings, for use of symbols (like @) in place of letters), and for your mark with popular criticizing blog names like “sucks.”
3. Search Social Sites (you should do this to safeguard use on sites)
You can grab your mark on many social sites. Here is a brief checklist of sites:
- Twitter (@mycompany)
- Facebook (“mycompany”)
- Google Plus
4. Mark Your Marks (you or your ad agency can do this)
Place a trademark notice on your marks. You can and should use a ™ next to the mark to show your claim of ownership right from the start even though not yet registered. In order to use the ®, one must have a federally registered mark.
5. File Applications for and Register Your Marks (once you decide on a possible name, have counsel move forward and file even if you might change names – often we file for multiple marks to reserve the names pending final decisions).
It is an art to file proper trademarks with effective classifications, designs, logos, trade dress, slogans, descriptions of use and strategies. Experience pays. Bargain filings usually cause problems and are not a bargain. If the mark is not yet used, counsel can file on an “intent to use” basis and then you prove use later. One should also file in all countries where the mark will be used.
6. Monitor Your Marks (you can do a lot of this)
Assign someone to be your compliance officer and have them (or legal counsel) monitor your registrations and activities of competitors. You can also hire, subject to finances, a watch service to report if anyone files a similar mark. Your compliance officer can check sponsored ads on browsers to make sure your competitors are not placing ads on browsers which send customers to them when they enter your name. Check metadata of your competitors to make sure they are not including your name to route your customers to them. Your compliance officer needs to regularly browse, browse, and browse, to see if anyone is purposely or inadvertently infringing.
7. Enforce Your Marks
There are no trademark police, so it is best to use legal counsel to enforce your marks. If you fail to enforce, you may lose your ability to stop others.
Many of the items on this checklist are for you to do and not lawyers or agents, and other items require a more experienced hand or legal letterhead. You and counsel should be working as a team to protect your brand, and due diligence from the beginning can prevent infringement lawsuits, can save money and effort, and can prevent false start campaigns.
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Because each situation is different, this information is intended for general information purposes only and is not intended to provide legal advice on any specific facts and circumstances. Ryan, Swanson & Cleveland, PLLC is a full-service law firm located in Seattle, Washington.