Article from the March/April Issue of Marketing Hour, Brand Police: Why your brand should be your first line of defense By: Charlie Lunan

With the plethora of information and competition in the marketing world today, it is vital for companies to develop an effective brand protection strategy. Having protection and setting standards for your brand will help protect your brand from the competition, and help to avoid risk of infringement for your brand.

A comprehensive brand protection strategy can and should be driven by marketers in close coordination with trademark attorneys. In the first phase, marketers work hand-in-hand with legal counsel to select marks that cannot only be registered, but also defended. In the second phase, they work together to monitor for trademark infringements and other threats, and decide how to respond. After consulting with several sources, we compiled the following checklist.

Phase 1: Research

1. Online Research- Conduct an online search to get a sense of what trademarks already are in use in your target market.
2. Hire a trademark attorney- At some point, you’ll need to call a trademark attorney to conduct a U.S. Patent and Trademark and common law search, since trademark rights in the United States stem not only from registration, but also from use of a mark. An attorney actually may be able to save you a lot of time, money and frustration by dissuading you from registering a trademark that will be difficult to defend. Tip: Trademark attorneys love made-up words, which are easier to protect than generic words.
3. Conduct a domain name and social media search- If someone already is using your trademark in a URL or as a social media handle, it’s better to know before you choose a mark, since you may have a budget for the cost of buying them out.
4. Register early- Once you pick a mark you want to protect, register it with the U.S. Patent & Trademark Office as soon as possible. Once granted, trademarks are retroactive to the time the application was filed, so you can file the application two to three years before you use it- while your product still is in development. It also puts competitors on notice.
5. Consider registering trademarks overseas- This is particularly important for companies that anticipate sourcing from or selling in the People’s Republic of China (PRC), where nearly 70 percent of all counterfeit goods seized by U.S. authorities in fiscal 2013 originates. Moreover PRC trademark law does not recognize common law usage, which means a trademark troll could trademark your brand before you even enter the market.
6. Register for adjacent uses- Consider future brand extensions into new product categories. For example, if you’re a footwear brand, consider registering your trademark for apparel and accessories as well.

Continue to Phase 2: Monitor and Enforce

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