By Alison D. Frey, Member, Dickinson Wright PLLC
Whether you have launched a startup or are working your way up in your company’s marketing department, this easy-to-follow article will have you feeling more competent and conversant on the topics of trademarks and copyrights by providing a roadmap to trademark and copyright protection and dispelling some common misunderstandings along the way.
- Perform a clearance search for trademarks.
The best time to search for conflicting rights is well before the company has invested time, money and emotion into a proposed new mark. Engage outside counsel to clear your frontrunners prior to making a final selection. You may just save yourself from the aggravation (or humiliation) of having to back off of the company’s favorite mark or worse, rebrand after spending half of your budget on marketing materials containing a mark that a third party asserts is infringing.
Trademark counsel can suggest the best approach for clearing your proposed marks. If you have a large number of them, a brief and inexpensive “knock-out” search could be done to eliminate those that are clearly problematic. With the list narrowed, you may wish to have your counsel perform a more extensive search on the final few and rank them in order of perceived risk and ease of enforcement and registration. The information gleaned from a full search can be very helpful in your final selection process, allowing you to select a trademark or tagline that is (1) unlikely to draw an objection from a third party, (2) easy to register and (3) capable of being enforced against others. Be sure and consider the availability of domain names and social media handles as part of this exercise. If you will ultimately use the mark in a foreign country, consider searching there as well.
Myth: A trademark must incorporate a design.
Fact: A trademark can be a word, design, tagline or a combination of any of the foregoing. It can even be a color, sound or smell.
- Register your core trademarks and minor marks and taglines.
Use of a trademark does generate rights in the mark, but a federal registration will augment those rights and ease your enforcement efforts. Even if you have been using them for a few years, there is a significant added benefit to securing a federal registration for your trademarks, even secondary or tertiary marks and taglines. A federally registered mark is more likely to be discovered and avoided by those looking to adopt a new mark and can block later-filed applications for similar marks. A federal registration can also (1) ensure your ability to expand use of a mark in the future, (2) form the basis for foreign registrations and (3) facilitate the settlement or even avoidance of a difficult dispute, because the owner of a federal registration enjoys statutory presumptions, which can cut through the murkiness of common law rights.
You should also consider registration of your mark(s) in foreign countries where you do business or may one day expand. It’s easier than ever to do so. In most foreign countries, rights will come through trademark registration alone and you do not have to use a mark to obtain a registration. There are certain countries where trademark pirating is rampant, so it’s best to be proactive than to be saddled with a dispute in a foreign country later on.
Myth: If the Secretary of State (SOS) says a proposed company name is available and it is then registered with the SOS’s office, no one else can use the mark.
Fact: Clearing and registering a company name with the SOS is unrelated to trademark rights.
- Register your proprietary visual or textual works with the Copyright Office.
Consider registering your awesome new website, marketing materials or packaging with the Copyright Office. It’s easy and inexpensive, and can be an invaluable tool against your competitors or other would-be infringers. Often, a copyright infringement claim can be coupled with a trademark infringement claim for a very effective communication. A copyright registration can also be recorded with U.S. Customs to prevent the importation of infringing items. Seek reputable intellectual property (IP) counsel to help you evaluate what is registrable and what is not.
Myth: Registration is expensive.
Fact: The official fees of the Copyright Office are less than $50. Once you work with IP counsel to file some applications, you may be able to handle future applications in house. A registration prior to infringement is the most effective weapon against copying and can reduce the fees incurred in connection with enforcement actions.
- Police your intellectual property.
Everything from your unique website to your trademarks and taglines can be yours, and only yours, if you put in the effort to protect them. In the U.S., a trademark owner has an obligation to police its trademark and prevent third parties from using and registering confusingly similar marks. The consequences for failing to do so can be a loss of rights. Typically, the earlier a third party is made aware of your prior rights, the easier it is to resolve the dispute. There are tools to help you detect potentially infringing trademark uses and filings early on. Talk to your IP counsel about which tools and approaches best suit your business and your budget.
Myth: You can only enforce rights in IP that is registered.
Fact: Both registered and unregistered IP can be protected with the right tools and enforcement strategy. It’s important to think outside the box. For example, if a copycat website is not close enough to your own to violate your copyrights in the site, registered or not, it may well be infringing your trade dress rights.