On Your Mark: Get Set… Trademark!

The Power of Proactively Protecting and Branding Your Intellectual Property

By Saji D. Gunawardane, Principal, US Business Counsel

I openly admit it: I’m a Taylor Swift fan, in terms of her career. Close friends and family may say I’m a Swifty, though not for the same reason that legions of lads and ladies long to stay in “style” and step with the swooning chauntress. Rather, I admire the business enterprise that is “Taylor Swift,” and how it “Swift-ly” – and some have appropriately noted shrewdly – took steps to protect its revenue-generating assets with a keen awareness of its present and future value, as well as the need to keep competitors and do-no-gooders at bay.

By trademarking key lyrics soon after publishing them, yet just prior to releasing them into the public domain, the business that is “Taylor Swift” positioned itself to maximize its yield from the use of certain phrases in multiple platforms, while also protecting her from exploitation. Viewed in essence, it was Business 101, and all businesses – megastar, mega-sized and mega-small – can stand to learn a lesson in proactive positioning like this when they, too, are set to launch.

Once you've made the decision that your business has intellectual property, such as the names of its products and services worthy of protecting and positioning for success, there are some simple steps you can take. Here are some initial considerations.

Why and When to Trademark

First off, it's important for businesses to understand what a trademark is to know if the legal protections they think they need are actually applicable. As defined by the United States Patent and Trademark Office, a trademark, wordmark or service mark is simply a brand name. This may include any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods or services of one seller or provider, from those of others, and to indicate the source of the goods or services.

Secondly, you may not need to register your trademark immediately. Under common law and generally speaking, trademark protections attach once the trademark itself is being used in commerce. Common law trademarks often carry symbols that product and service owners place on them, such as "TM" for goods and "SM" for services. Once your product or service is “in use,” common law protections extend to everywhere the trademark, wordmark or service mark is used in the commerce stream or arena. This means that if you only conduct business locally, your trademark rights may be confined to that region. But, if you conduct business in a wider region and use it there, no such limitation applies.

Act Swiftly

That said, when a business knows it has a brand in hand to protect, develop and maximize its value, it is generally advisable to move forward and register your trademark by filing a federal trademark application. While the application process is fairly straightforward and can be entirely completed online, it is advisable to tread carefully and methodically. (In other words, in this instance, not “Swift-ly”). As the USPTO itself recommends on its website, it is important to clearly know (1) the mark you want to register; (2) the goods and/or services in connection with which you intend to register that mark; and (3) whether you will be filing the application based on actual existing use of the mark, or a bona fide intention to use the mark in the future. This will make your search of the USTPO database more useful and may simplify the application process.

Navigate the Application Process with Diligence and Competence

It is important to note that this process calls for conducting a very diligent search on the USPTO’s database system, searching for any and all possible existing registered marks that the USPTO may deem to be similar to the mark you are trying to register. For this reason, while it is not required, most applicants use competent, experienced private trademark attorneys for legal advice regarding use of their trademark, to navigate and file an appropriate application, and, as the USPTO states, “to increase the likelihood of success in the registration process, since not all applications proceed to registration.”

To break this down in regular-speak: Many applications are routinely rejected because the applicant missed a step in the process that goes beyond simply crossing the “T’s” and dotting the “i's,” This includes giving pause to some key considerations that come into play when formulating language in your trademark application that best positions it for success with the USPTO examiner reviewing it (who is often an attorney, as well) – a process that commonly takes numerous exchanges and possible re-submissions that may be best led by an experienced attorney on and by your side. It is also important to have a solid understanding of how trademarks and copyrights differ, and which of these your business may need.

You’ve Finally Arrived. Now Be A Player.

Once your mark is registered and published by the USPTO, you can use the federal trademark symbol, the "R" in a circle, which can impart an image of quality to your product or business. At this stage, your protections can extend across the nation, even in areas where your company does not do business. The registration provides you as a business owner with a means to protect and maximize the value of your brand. Many businesses commence this process being motivated by the former, which is reason enough. But a forward-thinking enterprise leverages it as a tool to further its branding with confidence across all markets.

For instance, having a successful registration in the U.S. allows you to proceed to register your trademark in other countries. And positioning your business in a manner that allows it to enter new markets and regions with confidence is a good strategic move to maximize your business brand while furthering your personal business mindset from “protectionist” to “proactive.” A successful, well-positioned brand can foster opportunities to grow your business to levels of success beyond what you may have initially contemplated, including joint ventures or partnerships with similarly-aligned businesses, licensing to increase your revenue stream and brand awareness, and other opportunities that suit your particular business vision and philosophy.

For a free consultation and guidance to help you determine how to approach protecting and leveraging your intellectual property based on your particular business goals and that of your company, contact us at [email protected].