Trademark Protection for Small Business Owners: Just Do It - NOW!

In order for a trademark to serve its purpose, it has to be actively enforced. Being on the losing end of a trademark dispute can have a lasting, devastating impact on your business. Even merely litigating to protect a trademark in court can be cost prohibitive and significantly time-consuming. Ensuring that your trademarks are adequately protected is a perpetually ongoing task—but a large percentage of companies make things harder on themselves than it needs to be by failing to proactively and efficiently keeping tabs on their trademarks. The resultant vulnerability and increased risk of infringement complications is undeniably unfortunate, but the good news is that it doesn’t have to be that way. There are a number of methods to consistently and accurately monitor and safeguard your trademarks without breaking your budget or hiring tons of personnel to review watch reports around the clock. Understanding these methods, leveraging the capabilities of new technologies, and integrating protective measures into your business model can collectively transform the task of trademark marketing into a manageable and rewarding process. 

Why Monitor Your Trademark? 

You may be wondering why monitoring your trademark is so important, here are just a few of the reasons why protecting it will pay dividends down the road: 

  • If competitors utilize your trademark sans your permission, they can cut into your profit margin and detract from potential customers
  • Your reputation could take a nosedive if the competition uses your trademark to market low-quality goods or services, offers lackluster customer service, or is implicated in illegal or unethical business practices
  • Trademarks are only good if you police their usage—there are tons of examples of formerly enforceable trademarks that have officially been deemed generic because they became commonly used to refer to a type of product such as “aspirin,” and “thermos.”

Keeping Tabs on Your Trademark

A simple and straightforward method to monitor a trademark is to reference USPTO filings on a regular basis to ensure that no other individual or business entity has submitted an application to register a comparable trademark. While this process can be both time-consuming and easy for small-business owners to overlook, there is always the alternative: hiring a third party contractor to perform timely reviews of trademark filings and bring any to your attention that may be an issue down the road. While some business owners will balk at the additional expense, you simply cannot put a price tag on protecting the very identity of your organization. Losing that will surely overshadow the monthly payments towards ensuring that there is no potentially unnoticed infringements taking place. 

Register…Then Register Some More

After you have taken steps to confirm there is no chance of confusion associated with your mark, the next essential step is to register everything related to it—to include your company’s title, logo, slogans and product or service names. Any tangible or digital item that references your trademark, even tangentially, should be registered all at once to make sure that all of your bases are legally covered. By claiming formal ownership of these marks, you are effectively preventing another business or individual from using it for their own profit. Establishing this right now as opposed to later will set you up for success in the long term. Just be sure that until you complete the registration process, keep them away from your competition. If they finish registering a mark before you actually use it commercially, you’ll have no other option but to completely overhaul your marketing strategy or buy the rights from your competitor—neither of which will help your bottom line. 

Don’t Neglect Social Media

In today’s technology-driven economy, it’s hard to imagine a more disastrous scenario than registering your business name but losing out on the opportunity to leverage affiliated brand awareness on matching social platform profiles. A significant percentage of digital marketing efforts depends on those social media accounts having identical names that make it easier for customers to locate and purchase your goods and services instead of the competitions’. For example, register “@mycompany” on Twitter and Facebook.com/”mycompany” to claim marketing rights over them. Repeat this process for other social media platforms including: Instagram, Snapchat, Pinterist, etc. 

Use It or Lose It, Literally

As far as USPTO trademark registration goes, it is important that you stay up to date with your mark’s current status. Unfortunately, the USPTO will not send out friendly reminders for you to submit documentation to maintain your protections. Keep in mind that between the fifth and sixth years following a mark’s initial registration date, you will have to update the documentation related to your mark’s usage. If you are late in filing the required paperwork, your trademark protection could lapse altogether. 

Protect What’s Yours

If you verify that another business or individual is attempting to register a confusingly similar trademark, you have a limited opportunity to oppose the registration. Any entity that feels the registration of a trademark may negatively impact their business or identity can file an opposition to registration via the USPTO. Take note that there are strictly enforced timelines associated with this process. The opposition to filing has to be submitted within 30 days of the date the proposed registration is published on the USPTO’s official publicly-accessible journal called the Official Gazette. The opposition will be evaluated by the Trademark Trial and Appeal Board in a formal proceeding that is similar to any other judicial proceeding. It may be in your best interest to hire an experienced lawyer who is well-versed in trademark litigation and can effectively advocate on your behalf. 

‘Unfringing’ Infringement

Not everyone attempting to use the same or similar trademark will attempt to register it. Some sleazy competitors may even continue using the disputed mark after their registration application is rejected by the USPTO. If you have legitimate reason to believe that another entity is using a trademark that is identical or confusingly close to yours, you should immediately consult with an attorney for their input as to whether the competition’s use of the mark substantiates infringement on your trademark and what options are available to you in order to put a stop to it. In most cases, the first step is to send a ‘cease and desist’ letter that notifies the offending party that you have officially registered the trademark, provides a detailed description of the mark and explicitly states why you feel that the party is infringing upon it. The letter then requests the infringer to halt all usage of it immediately or you will take legal action. If they refuse to stop using the mark, you will have to decide whether to file a lawsuit to enforce your trademark protection rights. This is a fact-intensive and strategic decision that should be made in close coordination with your attorney. 

Next Steps

Protecting your IP is as important an investment in your business as creating your IP. Don’t let someone take what is yours. Work with our experienced counsel to formulate a plan to track and protect all of your intellectual property assets.

Francine E. Love
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Founder and Managing Attorney at Love Law Firm, PLLC which dedicates its practice to New York business law