INSURE a TRADEMARKABLE™ Brand
in Six Steps
The trademarks you select and register to represent your business are among the most important decisions you’ll make when starting an online business. There are six steps to creating Intellectual Property that will increase the value of your business, establish brand legitimacy, secure your exclusive niche in the market, and create a lasting legacy. A TRADEMARKABLE brand results from the steps you take before you file a trademark application. One of the most important is performing a trademark search to determine if your selection is available to become a trademarkable brand. Find out it’s not already owned and used by someone else, so you aren’t at risk of being sued.
The acronym INSURE and the steps it represents—Investigate, Navigate, Select, Use, Register, and Enforce—are the six steps necessary to build a valuable brand, a brand of distinction. Okay, it’s a bit corny, but at least it’s easy to remember!
The first four steps are actions you must take before you seek to file a USPTO trademark application. They lead to choosing a Trademarkable brand name, successful trademark registration, and the ability to enforce and sustain your rights.
70% of all trademark applications are refused! The steps you take before you file determine your results!
Each of the six steps is important; skipping a step can be disastrous. Taking a shortcut in this process is tantamount to jumping on a subway heading in the wrong direction: you’ll soon realize that your journey will likely take a lot longer and be more expensive than the original one.
These steps are not separate and distinct; they are interrelated. For example, the ability to maintain a brand through enforcement efforts may very well be tied to the other actions during the earlier Selection step. Let’s look at each step in greater detail.
INVESTIGATE—
Turn on the lights with a Trademark Search
A professional trademark search of the brand space is the first step on the path. And, if you’re not sure how to conduct a proper search to avoid conflicts, read on. A trademark search is like turning on the lights in an otherwise dark room: it lets you see the competition and leads you safely to the intended destination without bumping into others in their room you didn’t know were there. Don’t skip this step by relying solely upon what they can discern from the Trademark Office records, or worse, relying upon the Examiner to tell them what’s there.
It’s almost impossible to conduct your own trademark search since soundalikes, misspellings, and foreign translations of your mark can all cause your trademark application to be refused. And you certainly don’t want to get sued after launching! And, wait times to review your application are up to 10 months or more, which is why the waiting period for approval feels like it takes forever.
A complete search covers other marks you can not possibly discern from typing in the precise words to the USPTO website. A proper trademark search will reveal
- Non-identical marks that may nonetheless be confusing
- State trademarks in all fifty states
- Domain names containing the potential mark
- Common-law directories
- Trade directories and phone book listings
NAVIGATE —
Analyze and strategize
With a trademark search in hand, it’s time to see whether the prospective mark is worthy of a major investment. The investment includes marketing dollars, the legal costs of registration, and the future costs of maintaining and enforcing rights. Think of a trademark search as a chance to kick the tires of a new car or obtain a termite report before closing on a new home. Knowing the problems and benefits is better before making a long-term commitment. Without a full search and proper analysis, it is difficult to formulate a plan.
Your plan will include the precise mark(s) you will file to register and the exact goods and services to be claimed (In some cases, the plan should identify which goods and services should be avoided to sidestep potential opposition). A qualified trademark professional can use the search results to help you develop a comprehensive brand protection strategy
SELECT –
A Strong, Memorable Trademark
You Can Own & That Grows Your Public Recognition
i.e. a TRADEMARKABLE™ Brand
During an interview, I discussed the subject of with a real expert, Margaret Walker, then Senior VP of Intellectual Property of Xerox Corporation.
Let’s understand what makes for a strong trademark and what does not and what your risk tolerance is. Are you okay to go out and invest this much money in something which you are not going to be able to protect down the line?
Margaret Walker, V-P Xerox
What factors should you consider when making a final decision as to the trademarks to marry to your brand values and message? As a general rule, where a brand lands on the continuum of legal protection—from strong to weak—must always be considered.
What is the trademark continuum? The trademark continuum is simply the range of protection afforded to any given term that spans from strong to weak. Legal protection’s strength (and hence, degree) is based on a series of labels. These labels include coined, arbitrary, suggestive, descriptive, and generic. Read and learn more about the five choices for a trademark before you make a final selection: 5 Choices for a Trademark and 2 are Really Bad!
Use the trademark search to help you safeguard your business from potential trademark disputes. Before making a final selection, search for the intersection where selection meets protection.
USE AS A TRADEMARK
that meets federal the regulations
Trademark Use is the manner in which the trademark owner, as well as third parties (including the media), presents a brand name to the public. Proper use is best established when a product first enters the market, and it involves much more than nice brochures, ads, commercials, and pretty packages. The content of these marketing materials should present a clear, consistent presentation of the brand. The marketing materials should also include the identity of the generic product being sold. Dozens of pages of federal regulations define Trademark Use, whether on websites, product labels, and product displays or for us in marketing services as well as products.
Without Trademark Use, your trademark registration will be refused and may or may not be able to be corrected. And even after successful registration following registration, public use should be periodically monitored to avoid the risk that the mark becomes descriptive or generic.
Register a TRADEMARKABLE Brand with a Plan
A well-thought-out strategy before you file a USPTO application will greatly increase your odds of
successfully registering your chosen trademark and creating a Trademarkable Brand.
Trademark registrations are becoming ubiquitous for online businesses and are mandatory to create brand legitimacy. Here are a few examples:
- Amazon Brand Registry requires a trademark to become a trusted Amazon seller
- Apple has begun requiring a federal trademark to register in the App Store.
- Facebook, Instagram, and Twitter require a federal trademark as a condition of seeking to prevent the use of your trademark as someone else’s handle in Social Media.
- BIMI email authentication requires a federal trademark for a logo to take advantage of enhanced email security and deliverability
- Filing to recapture domains containing your trademark that are trading off your goodwill requires a federal trademark, without which your burden of proof is much higher.
Registration is like recording the deed to a house, allowing the owner to kick squatters out quickly and with minimal expense since it provides constructive notice to the world. Constructive notice is a legal substitute for actual notice, which is code for “I told you” to the world (of course, the understanding is that one can’t personally tell everyone in the world) of a claim to ownership of the property.
ENFORCE
and Sustain—Snooze, and you will lose your Trademarkable Brand
Successful trademark registration brings the brand owner to the most important point in the brand-building process: building and managing the brand’s public persona. The goal is to maintain the differentiating thoughts and feelings about the brand and remain valued and valuable.
You might ask, “What is monitoring, and why is it so vital?” Also called policing your mark, monitoring is intended to maintain brand health and avoid losing rights. This includes implementing brand protection strategies to reduce risk and liability resulting from unattended counterfeiting, diversion, tampering, and theft.
First, the law requires it. The brand owner must maintain registrations and monitor third-party use of his or her brand names and symbols in the market and, where appropriate, take action against infringers. This does not mean a trademark owner must file many costly lawsuits. As we saw earlier, rights can be lost when a mark is improperly used. A brand protection program protects business value and bulletproofs the brand from costly legal challenges if attacked. Remember the mantra for guarding brand value: SNOOZE AND YOU LOSE.
A well-designed monitoring program reduces online poaching and maintains brand equity. The objective of policing rights is to address third-party uses before a little problem grows into a big one. The cost of an ounce of prevention is less than hundreds of thousands of dollars in lawsuits or, even worse, a complete loss of rights.
Follow these steps, and you will be well on your way to a business and brand that’s BUILT TO LAST.
If you’re looking for a legal advisor with a proven track record in the field of trademarks, schedule a time to meet with us. The cost applies to the services for which you engage us.
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