To stand out in the marketplace, it is important to have a unique brand that is recognizable to consumers as a symbol of quality and satisfaction and to protect your brand to ensure it remains distinctive in the marketplace. To achieve that, you must start by developing a trademark strategy for your business.
Choosing Your Trademark
Today’s most valuable brands are fanciful or coined words, with no apparent meaning (i.e. “Nike” for running shoes and “Exxon” for petroleum products), or arbitrary marks that do not immediately convey to the consumer what the associated goods and services are (i.e. “Apple” for computers and “Amazon” for online retail services).
When choosing your trademark, you should avoid the temptation of describing to consumers what your goods and services are, or the geographical area from where your goods and services originated. Also, learn from these examples of when branding gone wrong and avoid trying to sound like famous trademarks. A descriptive trademark lacks distinctiveness in the marketplace and is also difficult to protect, given that all traders are entitled to use descriptive terms in relation to their goods and services. For these reasons, attempting to enforce exclusive rights to a descriptive trademark can be difficult without evidence that the trademark has become distinctive as a result of prolonged and extensive use.
Once you have decided on a unique trademark that is not descriptive, it is important to conduct an availability search in the country in which you intend to use your mark, in order to determine whether there is a confusingly similar mark already in use, or, pending or registered in that jurisdiction (Pro tip: ask for consultation from a professional trademark lawyer, for example, HeerLaw). Confusingly similar does not only include identical marks but also encompasses trademarks that are highly similar in appearance, sound and impression conveyed by the mark. There are publicly accessible, searchable trademark databases provided online by Intellectual Property Offices in numerous countries. It is also recommended that you conduct Internet searches, to search for marks that may not be registered but are already in use in the marketplace, as the rights attached to these marks through use may be enforceable against you. You may also wish to consult a local professional to conduct an availability search on your behalf, in order to give you the most comprehensive range of information on which to base your selection.
The Registration Process
Once you have selected your trademark, you may apply for registration in the jurisdictions in which you intend to use the mark. You may wish to apply for your mark in standard characters (i.e. block letter format), which will protect your mark in any case, font or colour that it is depicted. If you have also created a distinctive logo, you may wish to seek registration of your logo as a design or figurative mark.
When applying for a trademark registration, you will be required to designate the goods and services with which you intend to use your mark. Attempt to be as broad as possible in your description of goods and services, in order to provide for the broadest scope of protection for your mark. For example, should you apply for registration of your mark for use in association with “clothing, footwear and headgear”, this will protect your mark for any type of goods that fall under these broad descriptions; whereas, if you designated the goods “t-shirts, sweatshirts, sweatpants, jeans, sandals and baseball caps” in your application, your registration will only cover these specific goods. We note that in Europe, you may describe your goods and services in broad terms, as set out in the Nice classification of goods and services. However, in countries outside of Europe, such as Canada and the United States, you will be required to further specify a number of the goods and services that fall under these broad classifications, in accordance with the descriptions that are considered acceptable in these countries.
In choosing where to register, you may file individual national applications, or you may wish to utilize the unified trademark registration system in Europe, whereby one registration provides protection in all member states of the EU. The grant of registration is for 10 years and may be renewed indefinitely. Given the uncertainty presented by BREXIT, you may also wish to file additional applications in the United Kingdom and Ireland, should these countries eventually leave the EU. A grant of registration in either the UK or Northern Ireland is also for 10 years and can be renewed indefinitely.
Ensuring Proper Usage and Protection from Competitors
Use your trademark as registered. Your registration could become vulnerable to a challenge of non-use, should your trademark fall into disuse for an extended period, or the trademark is abandoned.
One pitfall trademark owners can fall into is condoning improper trademark usage by consumers, resulting in the spread of that usage into wider vernacular. Examples of this would be “Google®”, originally registered for use in relation to an Internet search engine but now used as a common verb to indicate searching for something online.
Also, avoid using your trademark in a generic sense, i.e., as the name of your goods and services. When referencing your on your website, on social media, and in your marketing materials, always depict your trademark in a distinctive manner, marked with the ® symbol, if the trademark is registered in that jurisdiction or the ™ symbol. It is also advisable follow the depiction of your trademark with a description of your goods and services, i.e. “Land Rover” sport utility vehicles.
When reference to your trademark becomes evocative not only of your specific goods and services but of similar goods and services originating from other parties, your trademark loses the ability to distinguish your goods and services from the goods and services of others. Your registration could also be at risk of cancellation, should your trademark become known as a generic term in the marketplace.
You should also regularly “police” your trademark, by conducting Internet searches and reviewing the official online publication of the Intellectual Property Office (IPO) in the countries where your trademarks are registered (i.e. the EU Trade Marks Bulletin and the UK Trade Marks Journal). This will provide you with notice of marks that are proceeding to registration that may be considered confusingly similar with your trademark. Once published in the official publication of the IPO, there is a prescribed period wherein another party may oppose registration.
Conclusion
The right trademark strategy can take your brand from good to great by creating consumer recognition and goodwill. Careful consideration and execution of one’s trademark strategy is essential to shape consumer perception of your business and brands.
Contributed by Bonnie Headley.
