Top 5 Tips on How to Protect a Trademark Against Infringement

by | Business

Trademark is a valuable asset that not only serves to represent your brand but also helps customers identify your brand from competitors. Having to protect a trademark in court dispute may result in a devastating, costly, and time-consuming process, even if you win the battle in the end. Losing the trademark in a court dispute in its turn results in serious damage to your reputation and having to rework your entire marketing strategy.

So in order to avoid or minimise the trade mark battling, it’s crucial to learn how to protect your trademark from the very beginning. Here are the top 5 tips on how to protect your unique trade mark.

Select a Solid Trademark From the Start

A trademark is the first touchpoint a customer has with your brand. It’s always a carefully thought out process of choosing a trademark that guarantees protection against infringement. There are five general types of trademarks that we advise getting familiar with before filing for trade mark protection.

Generic. A generic trademark does not qualify for registration. An example of a generic trademark is a brand selling coffee calling themselves “coffee”. If such trademark was registered, all other brands would be prohibited from selling coffee. In order to qualify for trademark protection, a generic trademark must include more details and describe the characteristics, qualities, or ingredients of goods a company sells.  

Descriptive. These are usually considered weak marks. Descriptive marks are usually composed of a word or phrase that merely describes the product or identifies its characteristics. Descriptive marks are unlikely to be protected by trademark laws unless they obtain a secondary meaning f.e Holiday INN for a chain of hotels.

Suggestive. A suggestive mark is a type of mark that hints at or suggests the nature of a product or one of its attributes without describing it. Examples are such famous trademarks as Microsoft which suggests software for small computers and Netflix which suggests streaming services. Such trademarks usually qualify for protection. 

Arbitrary. An arbitrary trademark is comprised of a word or a phrase carrying a common meaning in a language of the relevant jurisdiction that however is unrelated to the goods and services for which the trademark is used. Apple for personal computers and Amazon for the online marketplace are examples of arbitrary trademarks.

Fanciful or “coined”. These marks are comprised of terms only invented with the sole purpose of functioning as a trademark. Such well known marks as Google for web browser services, Lexus for luxury vehicles, Starbucks for coffeehouses chains and KODAK for photography products are fanciful.

Source: Unsplash.com

Fanciful and arbitrary marks offer the strongest level of protection for your trade mark. The downside associated with them is the need for greater marketing and advertising effort to help customers relate a trademark to a good or service a company is selling.

Conduct a Rigorous Trade Mark Search

After you’ve chosen the type of your trade mark, you need to complete extensive trademark research. The purpose is to figure out whether your trademark infringes some other business interests. In simple terms, whether a trade mark you’re going to use is already in use by some other business. 

A comprehensive trade mark research at the beginning will prevent you from significant time and money losses for rebranding in the future. It is best to eliminate the risks before you start investing in labelling, signage, advertising or any other activity where the trademark is involved.

Register Your Trade Mark

The next step in protecting your trade mark is registration. It’s a huge mistake to think you are protected only by using a trademark. Upon registration, specify all the goods and services you’re going to sell under a trademark. Be accurate since trademark law protects only products and services you list in a trademark application.

Did you know? At Chern & Co, we help to protect your trade mark by registering it under three jurisdictions: Ireland, the UK, and the USA. Contact us to get proper and prompt help with TM registration.

Start with local registration and then opt for registration of a trade mark in European Union with EUIPO (European Union Intellectual Property Office) or protect your trade mark internationally with WIPO (World Intellectual Property Organization).  International trademark protection will let you expand to another country or even continent knowing no other business is using or will be able to register a confusingly similar mark to yours anywhere in the world.

Respond to Office Actions or Oppositions Promptly

Once your trademark application is sent off, it will be reviewed by responsible officers. If they have any concerns or questions, they will send an official letter called “Office action”. These are quite common and it’s essential that you take them seriously and respond within stated deadlines. Otherwise, your registration application will be considered abandoned.

Protect a Trademark with the Ⓡ Symbol

While the responsible offices like EU’s EUIPO or USPTO in the United States register your trademark, they are not responsible for monitoring any unauthorised usage. The first thing you can do to prevent other businesses from unintentional copyright is to use the Ⓡ symbol when the application has been approved. This is the way to make a public notice that your trademark is officially registered and protected.

How to protect ТM from individuals who deliberately infringe it? An official letter from you as a holder of ТM rights known as a “cease and desist” letter can be an effective technique. If not, you and your attorney can file suit against an unauthorised user. 

In any case, the time and effort you put into protecting your mark are important when it comes to preventing any type of trademark and brand name copyright.

Maintain TM Use

Trade mark law protects your goods and services only if you employ consistent use of the exact same words, colours, and logos that were initially registered. The longevity of trademark protection doesn’t expire if you remember to file the renewal once in a while. For the first time, it’s essential to complete trade mark protection between the fifth and the sixth year of use. The next renewal must be conducted ten years after initial registration. Other renewals need to be filed every ten years to keep protection active.

Source: Unsplash

To Summarise – How to Protect a Trademark

Knowing how to protect a trademark is of paramount importance since a ТM is a valuable asset which customers associate with your brand. The process of trademark protection from copyright starts from the initial stage of picking one and lasts as long as you continue using it. So get armed with the tips we gave and let your trademark become unique, successful, and copyright protected.

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