How to Defend Your Trademark and Protect Your Brand

Starting a business typically means business owners are constantly juggling a slew of priorities. Knowing how to defend your trademark and protect your brand should be at the top of the list.

Choose a Strong Mark

Aside from ease of registration, your chosen trademark should be strong because it is the first impression a potential customer has of your brand. A strong mark should also protect against infringement. There are five common categories to consider when developing your trademark.

1. Generic Trademarks – Words used to describe a general product or service (i.e., “computer” or “cleaning service”). Generic words or phrases are routinely denied trademark registration with the United States Patent and Trademark Office (USPTO).

2. Descriptive Trademarks – Typically consist of a generic word preceded by an adjective (i.e., “tiny computer). These trademarks are rarely approved because of the lack of uniqueness.

3. Suggestive Trademarks – Indicate the product or service being offered within the name. Pizza Hut is an example of a suggestive mark. While suggestive marks offer greater protection, you run the risk of others using similar phrasing, like Pizza House. Though in very saturated markets like pizza restaurants, this may be less of a concern, as your product and service will likely carry more impact than your brand recognition.

4. Arbitrary Trademarks – Known words that are not necessarily indicative of the product or service being offered (i.e., Apple). Though better than suggestive or descriptive marks, they do require some amount of marketing since the correlation to the product or service is not inherently known.

5. Fanciful Trademarks – Offer the strongest protection. They are largely made up of terms with no relation to the product or service. Examples include Nike or Starbucks.

Register Your Trademark

While using your mark in your business advertising may give you common law protections, those protections are very limited. To obtain complete trademark protection, you need to register with the USPTO.

Prior to applying, you should be able to demonstrate to the USPTO that you have been using the mark in actual commerce. This can be something as simple as using it on your website.

The date you file your application, known as your priority date, will be the day that no one else can register a similar mark. When submitting your application, make sure you identify, with specificity, the type of product or service the trademark will represent. Because your trademark only covers products and services accurately listed in your application, you should work with your attorney.

Consider Registering Internationally – Unfortunately, the trademark protections you have through the USPTO will not hold up in other countries. This means that the first person to register your mark in any given country will likely be granted the rights. Without international trademark protections, it will be exceedingly difficult to protect against counterfeiters and achieve global business expansion.

Keep Your Trademark Use Consistent

Your trademark protections are only valid if you are continuing to use your trademark. Consistent use of the trademark, the same words or logo as originally registered, is a necessity. Using your mark inconsistently weakens its protections and could place you at risk in the event of an infringement. Though your trademark will never terminate, as long as you continue to use it, you will need to complete various maintenance filings over time.

Use Accurate Trade Symbols

The use of the ™ symbol may cause some to believe your business has a registered trademark, but this is not entirely true. While the TM symbol is indicative of a “common law” trademark, it does not mean the USPTO has registered your mark. However, you can use the TM symbol prior to and once you file your application. Then once your mark has been registered, you should begin using the ® symbol everywhere your products or services are displayed. This ensures public notice that the mark is federally registered and protected.

Be Diligent

To assert your rights as a trademark holder and protect your brand and business reputation, you need to monitor any possible instance of its use. For example, setting up a Google Alert for your trademark name will automatically prompt an email notification to you any time Google finds something on the internet related to your trademark. Also, conducting regular searches for similar names throughout your industry or locality is recommended.

What To Do When You Think Your Mark Has Been Infringed?

While the USPTO formally and legally registers your trademark, they are not responsible for enforcing it. In order to protect your trademark, you must police it.

A good first step if you find infringement is to confer with your attorney and discuss the issuance of a cease and desist letter to put the trademark infringer on notice. If the cease and desist does not elicit the desired response, you can seek remedy through the options below:

Lanham Act

The Lanham Act, enacted in 1946, created the national registry system and protects a trademark owner against similar use.

The Act provides a way for companies to watch for alterations to their trademarks, prevents trademark dilution, and protects against false advertisement and the likelihood of consumer confusion.

In order to qualify for protection under the Lanham Act, the mark must: 1) Be used in commerce AND cause confusion or deception or 2) Contain false advertising.

The “likelihood of confusion” test focuses on the similarity of marks and looks at the hard evidence of confused consumers, while the false advertisement test requires a trademark holder to prove there was commercial injury caused by the advertisement.

Injunctive Relief

Another option when fighting trademark infringement is to seek injunctive relief. Through injunctive relief, you can be granted a temporary restraining order or other enjoining court orders to stop the offending use.

In August 2020, Arizona State University (ASU) did exactly this to protect its trademark and logo from false advertising related to COVID-19. A social media account was using school trademarks to disseminate false claims about the school’s requirements for the pandemic. Among other things, the account said students were not required to wear masks and claimed the school believed the entire pandemic was a hoax. ASU sought a restraining order and preliminary injunction alleging that the account was “spreading dangerous misinformation,” and that the unauthorized use of ASU’s trademarks not only harmed ASU, but if not enjoined, was likely to endanger the health of the university community.

Similarly, larger medical supply manufacturer 3M has been granted injunctive relief against numerous product counterfeiters using its trademark to price gouge on protective masks. Microsoft was granted the same amid COVID-19, due to computer hackers using its name and trademark to phish for customers’ personal and health information.

Engage an Attorney Early

Once you have chosen a strong mark and registered with the USPTO, you can feel confident in the legal backing a registered trademark provides. However, to completely protect your trademark, track your maintenance deadlines, be sure to police unauthorized use, consider international registration, and work with a skilled trademark attorney.

Contact Counxel Legal Firm

If you would like legal assistance, contact Counxel Legal Firm at 480-536-6122 or at intake@counxel.com to set up a consultation. 

This article is intended for informational purposes only and does not constitute legal advice for your specific situation. Use of and access to this article does not create an attorney-client relationship between you and Counxel Legal Firm. Please contact intake@counxel.com or 480-536-6122 to request specific information for your situation.

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