A company’s trademarks, whether in the company’s name, or likeness, or in that of its products, are crucial to protecting the goodwill generated through its investment in people and capital. It is significant to its brand, as it helps identify and protect the integrity of a brand, and ensures that the company distinguishes itself from its competitors. The trademark also readily informs the consumer that the goods or services are of a certain quality or standard. The goodwill derived from a strong trademark can improve business by giving the consumer a positive impression about the product and doing business with the company itself.
Trademark rights arise from actual use of a name, logo or symbol in the marketplace. There are several actions that a company can take in order to protect its trademark portfolio, namely its registered trademarks, service marks, unregistered trademarks, domain names and corresponding copyrights.
A first suggestion is to develop a strategy to determine which marks are important, and how, where and when the trademark rights are to be asserted. This action includes determining which legal jurisdictions are important from a business and marketing perspective. Once a trademark attorney has conducted the necessary trademark searches and cleared a proposed mark, it is advisable to rapidly file for a federal trademark registration. The timing of an application for registration is also critical because typically the first to file takes priority over subsequent filings in respect of identical or similar marks. Once the proposed mark is registered, it is important to note the registration date and the renewal date in order to ensure continuous protection of the mark.
Another action relates to trademark usage. In managing a trademark portfolio, it is important to ensure that rights do not lapse due to non-use of the mark. Depending on the relevant jurisdiction, the ownership rights to a mark may lapse if the mark has not been used for a period of three to five years. It is important to implement programs based on a competent attorney’s advice to ensure continued use, or at least a seasonal or rotational use of marks to prevent cancellation or revocation of them. It is also advisable to ensure correct usage of the marks because they can lose their distinctiveness and value if they become eroded.
A recommended strategy to maximize the value of a trademark portfolio is to be vigilant and to take swift action to prevent infringement or deal with it accordingly when it is detected. The owner of a trademark portfolio must be prepared to take action to preserve rights by employing both defensive and offensive strategies. Defensive strategies, including marking the products with TM, SM and ® symbols can help reduce legal fees and establish legal damages through fair warning to would-be infringers. Defensive tactics also include conducting consistent surveillance of the market place and the competitors’ activities, and educating the consumer on how to identify genuine products as well as alerting them of infringing products.
Numerous offensive strategies are advisable as well. For instance, a company can appeal or oppose the registration of marks that are identical or confusingly similar to its own marks. It is also advisable to issue cease and desist letters, or publish warnings when infringement is detected.
In taking these actions, it is advisable to seek the best legal consultation regarding the management of the trademark portfolio, itself, as well as determining the instances and nature of potential infringement. Leading trademark counsel are also effective advocates that can provide advice and counsel on how to deal with infringement, through amicable resolution or an enforcement action if necessary.
Therefore, choosing the best law firm that is qualified to provide sound legal advice on trademark and copyrights related matters is a critical issue for any business venture. Good advice can mean a strong brand in the marketplace that serves to protect capital investment and deter infringement by competitors. The alternative is erosion of goodwill with customers, and easy infringement. The latter may mean loss a fortune in human and financial.