The key to long-term brand success is brand recognition. Brand recognition necessarily requires a trademark strategy. The nuances of trademark practice create all sorts of headaches when they are ignored. Here are 10-and-a-half tips for dealing with trademark issues.
1. Narrowly tailor descriptions of goods and services. In trademark applications, greed is not good when it comes to identifying goods and services. Though it is tempting to list a plethora of goods or services, biting off a bigger description than necessary can become problematic when declarations of use are filed or litigation reveals that no actual use of the mark has occurred in a particular category of goods or services. The consequences for such false information, regardless of the existence of any intent, can be loss of an entire registration.
2. Do not guess at first-use dates. Spend the time to find out when a mark was first used and first used in commerce. If your client uncovers documentary evidence in determining such dates (i.e., an invoice, a bill of sale, a notification of product launch), send that information to trademark counsel. It may seem easy when launching a product to identify the date when first use occurred, but 15 or 20 years later, that record is not so easily located. File any such documentation away with trademark counsel for use when a litigation rainy day arrives.
3. Conduct a clearance search. Mark Twain told us there is no such thing as a new idea. In the world of trademarks, that is often the case. Before resources are expended on branding, advertising and product manufacturing, it is important to assess the marketplace and have trademark counsel review the trademark landscape and offer advice as to the registrability of a trademark or the degree to which that trademark is already in use by other entities in the same or related goods and services fields.
4. Avoid selecting descriptive marks. The difficulties in both registering and enforcing a mark are magnified when the mark seems descriptive or has descriptive qualities. The more arbitrary the mark the easier it will be to register, police and establish a unique brand identity.
5. Use the mark in a consistent manner. Once a mark is selected, as the years go by, sometimes fonts are changed, logo colors are altered, additional information or wording is added, and all the while a client retains a ® designation, despite these changes. No change should be made to any mark, logo or packaging (assuming the trade dress is unique) without discussing such changes with trademark counsel. Changing such aspects of product identification without consulting counsel can result in false registration claims or the negation of or weakening of the ability to claim intellectual property rights on an aspect of product design.
6. Police the mark. Once a mark is selected, the mark owner must use it or lose it. Additionally, the mark owner should police the marketplace and enforce its trademark rights. When infringements are discovered, consulting trademark counsel is appropriate. Counsel can offer a variety of options (not all of which will involve litigation) to protect the mark against infringement and subsequent dilution.
7. Police areas of reasonable growth. Not only should a mark be policed, but any policing activity must be broad enough to encompass the areas of reasonable growth. A mark owner is entitled to reasonable expansion of use of its mark. Consideration should be given to defining watch services broadly or otherwise policing the mark in a way to sweep in areas of growth so that predecessor rights are not established in the area where a mark owner intends to expand. The scope of watch services should be routinely updated such that existing business and intended expansion are monitored.
8. Do not ignore social media. Social media is the wave of future branding activity. However, it is full of trademark pitfalls. First, a mark owner is no longer in complete control of how the brand is presented. Individuals may use a mark to promote, as well as to bash, a product. Some uses may be permissible, while other uses are not. Part of any policing effort must necessarily include a social media monitoring strategy.
9. Handle licensing properly. Even intracompany licenses require the licensor to police its rights and monitor the quality of goods and services being branded. Do not enter a naked license. It can cost a licensor its brand.
10. Coordinate IP protection strategies. While it is tempting to protect intellectual property in as many ways as possible, conflicting rights can result in cancellation of rights. For example, in Georgia-Pacific Consumer Products v. Kimberly-Clark, 657 F.3d 723 (7th Cir. 2011), Georgia-Pacific asserted a trademark claim as the maker of Quilted Northern toilet paper against Kimberly-Clark as the maker of Cottonelle toilet paper that was based on a registered design on the toilet paper. However, Georgia-Pacific also had utility and design patents on the same design registered for trademark protection. The language describing the “central advance” of the patent was virtually identical to the language detailing the “essential feature” of the trademark. The court rejected the trademark claim, holding, “Functionality polices the division between patent and trademark law, and if a design is functional the owner cannot trademark the design and block innovation. Georgia-Pacific, whether intentionally or not, patented their Quilted Diamond Design and claimed it to be functional. They must now live with that choice and can benefit only under the protection of a patent, not that of a trademark.”
10.5. Consult trademark counsel as part of your business counseling strategy. Underscoring all of the preceding 10 tips, but deserving of specific mention, is the need to consult a trademark attorney prior to making any decisions affecting branding, trademark registration or trademark litigation. Informed counseling in this area can save hours of headaches down the road. Before tackling any of the issues above, consult someone who can guide you or your client in the right direction.
Cecilia R. Dickson is an experienced trial lawyer at the Webb Law Firm in Pittsburgh, with a particular focus on intellectual property litigation relating to patent, trademark, copyright, covenants not to compete, and other intellectual property issues. She is the past chair of the Pennsylvania Bar Association’s Intellectual Property Law Section, past president of the Pittsburgh Intellectual Property Law Association, and currently serves as the chair of the Local Patent Rules Committee for the Western District of Pennsylvania and the chair-elect of the Allegheny County Bar Association’s Civil Litigation Section.