Trademark is the area of law that helps companies protect their brands. “Trademark” is a great word for a lawyer, but I prefer to speak to the masses. I call this brand protection law.
Did you know that this area of the law came from medieval guilds and ancient ranchers? Guilds assigned makers’ marks to the different guild members so the public could tell who made a certain pewter mug or ceramic plate. People came to like the work of some craftsmen more than others, which made some marks more valuable than others. Guilds got the idea of these marks from ranchers. They have used brands to identify livestock for nearly 5000 years. Even ancient laws punished ranchers who were found to have livestock with another rancher’s brand. This evokes a different understanding of “brand protection.”
Main Components Involved in Protecting Your Brand
Today the main purpose of this area of the law is consumer protection. We want consumers to know who made this product or is offering that service. Accordingly, the law gives greater protection to distinctive brands. This means two things: (1) brands which contain only generic or descriptive words get little or no protection, and (2) companies using brands which are similar to an older, competitive brand are forced to stop.
I think of brand protection law as having four separate components: searching, authentication, policing and enforcement. These four disciplines each help you identify your potential risks and help you find ways to increase your legal rights.
Search
Brand protection should always start with searching. Searching helps you understand what risks and opportunities your company may have while using a brand. Sometimes it helps you understand whether or not a word used in a certain industry is descriptive. Often it helps you realize what similar brands already exist, and whether you are on the verge of committing trademark infringement. It also helps you understand what may be available for you to claim as your own. Searching is a lot like turning on a light in a dark room. You really don’t know how a room is arranged until you turn on the lights. Most IP lawyers have tools that help them collect hundreds of pieces of data to help them understand what brands exist in the space you plan to enter.
Authenticate
The next step is authentication. While most people think of federal trademark registration, authentication is any step which provides evidence in your right to use and/ or claim rights in your brand. Brand protection law is unique in that every company gains some level of rights simply by using a brand. When done well, authentication enhances these rights and provides a way for others to easily discover your ownership.
Police
Once you authenticate, you need to police your rights. As the name suggests, this is an ongoing review for anyone who may be infringing your rights. You cannot allow other companies to use confusingly similar names because the public will stop associating your brand with you, and you can lose your rights. Policing is likely the most difficult of all the steps, mainly because it requires diligence. Most IP lawyers have access to tools to help you with this step. I recommend scheduling a regular meeting (e.g., once a quarter) with your IP lawyer and other key management to discuss any threats to your brand rights.
Enforce
The next step is enforcement. If your policing efforts show that another company is using a brand that is so similar to yours that the public may be confused, you need to take some action. Remember: you can lose your rights in your brand if you let too many people use a similar brand. The good news is that “doing something” doesn’t always have to be expensive. Consult with your IP lawyer to find a solution that fits your situation.
Notice I said there were four components of brand protection—not four steps. The reality is that your company will change, and so will your industry. You’ll want to sell new products and services under your existing brands, or you may want to retire your brands for newer brands. This will require new searches and likely new registrations or other types of authentication.
A quick warning: brand protection is not the same as creating an entity. Similarly, creating an entity is not the same as brand protection. Both are necessary, and each serves a different purpose. Organizing an entity allows your state to recognize your company as a separate legal entity. The Secretary of State does perform a very quick name search, but this is not the same as the trademark search I mentioned above. It is entirely possible that using the name the state approved could make you an infringer. The only way to be sure your brand is not exposing you to excessive risk is to conduct a brand protection (i.e., trademark) search.
This month I will write about brand protection as it relates to companies at different stages. Please join me next week as I write about unique challenges and opportunities related to companies in the startup phase.
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