Protect your brands

Nothing sets a business apart from
the competition like a stable of
product or service names or logos. It is imperative to protect those trademarks
by appropriate management and registration. In today’s global market, businesses
must lay a foundation for protection in
every country of interest to their business. Starting this process early provides
maximum security.

Careful trademark/brand management
not only builds brand loyalty, but, when
used effectively, trademarks can become
their own entities, symbolic of the total
consumer experience when purchasing a
product or service. This phenomenon
makes the trademark one of the most
valuable forms of intellectual property.

“There are several trademark management best practices that will protect a
company’s investment in its brands,” says
Kathleen Pasulka-Brown, partner and co-leader of the Trademarks & Copyrights
Practice Group at Procopio, Cory,
Hargreaves & Savitch LLP. “They include:
methodical brand-name selection, managed registration of all existing and
prospective brand names and logos, and
a carefully prepared trademark strategy
with an ongoing review process that
maintains the effectiveness of the brands.
Mistakes in any of these areas can be
costly in terms of monetary value as well
as a reduction in brand value.”

Smart Business spoke with Pasulka-Brown about how to register and protect
your company’s trademarks.

What is the impact of the length of the
trademark registration process?

It has always taken more than a year to
obtain a trademark registration. It is
important to note that while a trademark
can be used during the approval process,
it can ultimately be declined, causing losses in marketing investment and any good
will developed under the trademark. This,
in turn, may translate into a costly endeavor of relabeling products and packaging.
Initially, in the United States, trademark registration requests are scrutinized by an
examining trademark attorney who
checks to confirm whether the new mark
is capable of trademark significance and
whether a conflict exists between the new
mark and any existing trademark applications or registered marks.

Why is the trademark selection process so
important?

In the United States and many other
countries, marks do not have to be identical and the goods or services do not have
to be the same in order for the trademark
examining attorney to find that a conflict
exists. It may be enough that the marks
are similar and the goods or services are
related. To make certain a particular
trademark is approved, a thorough search
should be conducted before filing the
application. However, because the confusion criteria are subjective, marketing
departments may miss some of the
nuances in this search. For this reason, it
is preferable to have a trademark attorney
perform and evaluate the search because they have access to more comprehensive
databases and will evaluate the choices
on a different level, looking for nuances
that may create a likelihood of confusion.
Last, marketing departments should
select several names. This will prevent
them from becoming enamored with just
one, in case the more prudent decision is
to move forward with another selection. It
is vital to request a search in each country
of interest by an attorney if you are planning to use the brand during the approval
process and in order to protect the investment in the application.

What are the other benefits of trademark
registration?

Besides the enhanced marketing capabilities, benefits of registering a trademark in the United States include: notice
to the public of the claim of ownership of
the mark by the registrant, legal presumption of ownership by the registrant,
increased rights in court, use of the symbol ® and the ability to obtain enforcement action by U.S. Customs. The benefits in other countries are similar.

How can CEOs maximize the value of the
company trademarks?

In order to maintain the validity and
enforceability of a trademark registration
or the enforceability of a nonregistered
trademark, owners must police their
mark, meaning that if they become aware
of an infringement — which happens
when another party uses a similar mark —
they must take appropriate action.
Trademark owners should also protect
their mark by obtaining a domain name
that is the same as their trademark. Companies should also engage watch services
that will assist in the policing process. The
watch service results should be reviewed
by trademark counsel, which is a good
way to keep an eye on competitors.

KATHLEEN PASULKA-BROWN is a partner and co-leader of the Trademarks & Copyrights Practice Group at Procopio, Cory,
Hargreaves & Savitch LLP. Reach her at (619) 525-3827 or [email protected].