Does your brand occupy the field? Check-the-box versus strategic planning

April 9, 2015
Nicholas D. Wells
InsideCounsel

Protecting your brand through a federal trademark registration is a straightforward and appropriate step that almost every business should take. In fact, for many businesses a strong brand may be their single most valuable asset, and it is frequently the one that would be the most difficult to replace if its value were undermined by the actions of others.

But much more can be done to protect your brand than simple registering a trademark.

When considering your branding strategy, consider three levels of legal protection.

Check-the-box

The first level is a simple trademark registration for your company name or you main product. For example, suppose you operate a perfume business called TORI GIRL and you sell a perfume called CALUMNY. Your first step is to register the trademark CALUMNY for perfume.

You’ve checked the box. You have a trademark registration for your brand, but nothing more.

A more complete defense

Most companies face a multitude of possible problems related to their trademarks. A competitor might start using a similar logo, or another company might start selling products under a brand that you were about to launch.

At the second level of brand protection, you extend your trademark protection to give you a better defensive market position. You put in place enough legal rights that other companies—whether by accident or design—are much less likely to do business with the brands and products that you want to protect as your own.

Continuing the example above, at the second level you might register the company name TORI GIRL, as well as the logo designs for the company and product names. You might reserve rights in advance for a new product name that you plan to introduce next year (via an Intent to Use trademark filing), so that no one beats you to market with a similar name.

Occupy the field

At the third level, you take proactive steps to obtain and protect legal rights that are as broad as possible. You anticipate and plan a legal strategy to “occupy the field” in so many ways that your key intellectual property assets have multiple layers of protection. We often think of major consumer product companies such as Coca Cola or Proctor & Gamble as being highly protective of their brands. But the owner of any brand that is a significant business asset can take the same approach. Occupying the field may include steps such as these:

  1. Seek trademark registrations on your minor products or on products outside your core business.
  2. Seek trademark registrations on trade dress elements, marketing taglines, designs and colors that are associated with your products or your marketing messages.
  3. Consult with trademark counsel to evaluate the strength of your current registrations.
  4. File additional registrations that use broader language where permitted by the U.S. Patent and Trademark Office.
  5. Distribute promotional items that allow you to register your brand in additional classes.
  6. License your brand to others and register it in the classes corresponding to the licensed goods.
  7. Prepare an international brand strategy and protect your brand in key sales and manufacturing markets overseas.
  8. Prepare a domain name strategy that correlates to your trademark strategy.
  9. Use a trademark watch service to monitor for similar brands that others try to register.
  10. Prepare an enforcement policy to decide how to address intentional misuse, counterfeits, and use of possibly confusing brands by others.
  11. Train employees to spot trademark infringements and to use trademark symbols properly.

As in the world of patents, some trademark registrations may provide only a small amount of additional protection. But investing in a portfolio of intellectual property has real advantages. Defensively, it is more likely to be seen by others (as they check for conflicting trademarks) and thus preempt problems by encouraging others to make different plans that do not infringe your trademarks. Offensively, it gives you much greater ability to pull out just the right tool to combat an activity that threatens to undermine the value of your legal rights.

As one example of this last point, suppose that the Tori Girl perfume company mentioned above is using a distinctive bottle shape and a logo that includes a design resembling a ponytail. They are at level two: They have trademark registrations on TORI GIRL and on the logo design with the product name CALUMNY. But now a competitor is selling a cosmetic product with a very similar ponytail design in a case that resembles the CALUMNY perfume bottle. If Tori Girl had registered their bottle shape and the ponytail design separately, they would be in a much stronger position to either stop the competitor’s actions through legal processes or to negotiate from a position of strength based on IP assets that had been vetted and registered before a dispute arose.

As with any investment in legal services, the proper level of brand protection depends on your organization’s goals and the value of your trademark portfolio. But too often an organization assumes that protection—even for very valuable brands—is done as soon as the first box is checked.