Jay Sachetti joined Jeff O’Brien, partner at Husch Blackwell and Dyanne Ross-Hanson, president of Exit Planning Strategies talked about the market for mergers and acquisitions, exit planning opportunities for companies that don’t end up for sale and how companies can maximize their eventual sale price during an early October panel at the first Upsize on Tap event at Summit Brewing Co. in St. Paul.
When the state Legislature passed a law requiring employers to provide paid leave and safe time for employees, Justin Bieganek started hearing differing details from friends, colleagues and peers.
Your company’s trademarks are the first and most direct touchpoints to your consuming public and thus an invaluable asset that must be carefully created and vigorously defended.
Think of trademarks as the slogans, product names and service names that your company alone uses to market its products or services. Go through the checklist below to protect current trademarks and the creation of future brands.
In the beginning
Whether your company is considering a new name or about to launch a new product, it is important to consider the message that you want your new brand to convey. Your brands should be memorable, convey a positive message and distinguish your company’s products from those of its competitors.
All trademarks fall within a continuum of protection that ranges from generic to fanciful. Generic designations cannot be monopolized by a single entity because they are the common commercial names for products or services. Descriptive designations are likewise difficult to protect because they describe a particular characteristic of the product for which the mark is used.
Suggestive designations are considered inherently distinctive and protectable trademarks that require imagination or thought to reach a conclusion as to the nature of the products for which they are used.
In view of the fact that generic and descriptive marks are difficult to enforce and do little to distinguish your company’s products from those of its competitors, I encourage you to focus your branding efforts toward suggestive, arbitrary or fanciful marks.
Suggestive marks are a good choice to consider because they are distinctive and provide some hints about the nature of your products. It will be less difficult for your marketing team to educate consumers about the link between your new brand and its associated products.
Arbitrary and fanciful trademarks are composed of real words and made-up words, respectively, and provide no information about the associated products. They are a good choice since they are distinctive, readily enforceable and allow your branding team to create a memorable message that will be unique to your company’s products.
While it may take some additional advertising dollars to educate consumers that your new brand relates to your specific products, once the association between brand and product is developed, it will forever be burned into the consciousness of the consumer.
Next, get clearance
Now that your company has created a list of prospective names, I recommend that you use a reliable search engine to perform a query of your new name. If the search reveals that someone else is using the same or similar name for a related product, they will likely have senior rights and you will want to consider an alternate mark.
While frustrating, the cost of selecting a new name at this stage in the process will be less expensive than having to later change your name if the senior party alleges you have infringed on its trademark.
Assuming that your online search is clear, I suggest that you contact a trademark attorney and request that they perform a full availability search. Your attorney will retain a trademark research firm to generate a report of your proposed mark in connection with the associated products. The search firm will investigate dozens of proprietary databases to determine if another company is using the same or similar mark in connection with related products.
Your attorney will then prepare a formal availability opinion outlining the risks associated with adopting the proposed mark.
A full search and opinion can range from $750 to $1,200 or more. While a significant investment, I strongly suggest that you include a search and opinion in your naming budget since there is simply no better way to get a reliable picture of the risks associated with the adoption of a new trademark.
On to protection
Your company now has the green light to use its new trademark. How do you acquire trademark rights in the name? In the United States, trademark rights are earned the moment you begin to use the trademark with your products.
The date you first used your new mark is important because it establishes your priority or rights in the mark. As such, I recommend that you memorialize the date that you first began to use your new brand.
The rights that are earned by simply using your new trademark are called common law rights and will allow your company to prevent a third party from using a similar mark in connection with related products in an overlapping marketplace.
In the United States, your company can also earn trademark rights well in advance of actually using the mark by filing with the United States Patent and Trademark Office (USPTO) an “Intent to Use” trademark application. While the application will not issue as a registration until you have started to use the mark, this is a creative way to extend your priority in the new trademark to your filing date, which may be months or years before you actually introduced your trademark into the marketplace.
To keep it simple, common law rights will give you some rights to enforce your trademark in a limited geographic scope simply by using the mark. However, a federal trademark registration will enhance your common law rights by extending the scope of protection to all 50 states, as well as provide a laundry list of additional rights and remedies not available via common law use alone.
Enforcing your rights
Having selected, cleared and protected your new trademark, your company is now the owner of a valuable bundle of rights. In order to maintain those rights, a trademark owner has a duty to enforce those rights against third party infringers. Failure to do so could result in a diminishing or outright loss of your trademark rights.
Work with your trademark counsel to initiate a monitoring service that will report to you when another company attempts to use or register a confusingly similar mark. I also recommend that you designate an individual to monitor the Internet for infringements of your marks on a regular basis.
