Brand Protection Is No Joke

Lisa Wright,

April Fools' Day is marked all over the world each year on April 1st. It is widely held that in England on this day in 1700, people began to popularize the annual tradition of April Fools’ Day by playing practical jokes on each other.

April Fool practices include sending someone on a "fool's errand" (a task or activity that has no hope of success), playing pranks and trying to get people to fall for ridiculous ideas or things.

Funny trademark oversights

In 2010, ThinkGeek (which migrated to the GameStop brand in July 2019) devised a legendary April Fools’ gag. The geek-related merchandise seller created the fictional product ‘Canned Unicorn Meat’ and a product page which listed it for sale. In the description of the product, the following statement appeared: “Pate is passe. Unicorn - the new white meat.”

Lawyers acting for the National Pork Board somewhat rashly issued a 12 page cease and desist letter in defense of their registered similar mark THE OTHER WHITE MEAT. It was a very awkward moment when they discovered that the product didn’t actually exist!

A quick search using our Enhanced Knockout Search tool today reveals that brand owner The National Pork Board still holds 1 valid trademark for the mark text THE OTHER WHITE MEAT and a second application is pending (2 further trademarks have since expired). All marks have been registered with Mexico’s IMPO and 3 of them are found in Class 35 (Advertising and Business), with one in Class 29 (Meats and Processed Foods).

There have been many funny trademark oversights over the years. Careful research into the existence of a product before taking any infringement actions could save you face in the long run.

Maintaining your trademark rights

Joking aside it is critically important as a brand owner to maintain your rights to a trademark and to act swiftly if you think that a third party is infringing on your rights. Trademark rights are incredibly powerful because they can last forever if properly maintained. And, if you keep on using your trademark over many years you can build brand loyalty and consumer goodwill, both of which can be extremely valuable business assets.

However, like many other things in life, you have to look after your trademark in order to keep it strong. 

4 ‘M’s of trademark maintenance

Here are 4 things you need to keep in mind when taking care of your trademark:

  • Mark 
  • Make careful use
  • Monitor
  • Maintain

1. First of all when you refer to trademarks in print or on the Internet you need to ensure that they stand out from the crowd. By marking them you put other people on notice that you are claiming rights in the trademark. If it's a word mark you can put it in all capital letters or you can capitalize the first letter of the trademark.

Another way you can make your mark stand out is by altering the color or the font of the trademark to make it pop or you can add the correct trademark indicator (symbol) after the mark. You may have seen the TM or R symbols before.

2. Secondly, you also have to make careful use of the trademark. Ensure that your use is consistent. Use the same form of the trademark every time and the same form that you used in your trademark application when you filed for trademark registration. You should decide on your final version of a word mark or logo before you file an application. Be consistent too and make sure that you use your trademark with the products that you listed as your product descriptions in your trademark application - as it is these products that are covered by the scope of your trademark protection.

You also need to ensure that your trademark use is correct. Trademarks are adjectives and they connect a source to goods and services. Take Google. Google is a trademark. The correct use would be to state that the Google search engine is used to undertake research. An incorrect use of the Google trademark would be to state that someone uses Google (noun) or Googles a term (verb). If you are inconsistent with the correct use of your mark or let others use it improperly you can lose the rights to keep others from using your trademark - known in trademark law as genericide

This can be prevented by educating both your employees and consumers about the issue. Many famous brands have done much work in trying to address this issue, like Lego, who favor using “Lego bricks” in their marketing material, rather than the plural “Legos”. And, Velcro has put together a great video resource for this!

 

Genericide has already happened to some of the strongest and well-known trademarks around. Some examples include trampoline and cellophane. The brand owner no longer controls the use of that brand name and inferior quality products can now be marketed and sold under the name. Your business’s most valuable intangible asset is now hugely devalued. This is no laughing matter. You can combat this by using our ExaMatch product feature search to catch any generic uses in trademark applications and oppose them early on!

3. Thirdly you need to protect your trademark coverage. Be vigilant and monitor your trademark at all times. This will help you to prevent third parties from applying to use similar marks to yours, which would weaken the strength of your brand. Our new pay-per-watch tool Word Watch can help with this. Word Watch monitors your trademarks and slogans and alerts you to applications for potentially conflicting marks. In this way you minimize the risk of missing potential trademark infringement and save time by getting relevant watch alerts only!

4. Finally maintain and keep your registration up to date with the registry or registries that you have filed your trademark under. Different jurisdictions have different renewal procedures and you should check with each registry that you have filed with to make sure that you are aware of the process and deadline to renew your trademark to keep it valid.

Don’t fool around with your brand protection

To optimize brand strength and the value of your brand you need to be vigilant about the way you mark, use, monitor and maintain your trademarks at all times. Brand stewards sleep with one eye open (or get wake up alerts from TrademarkNow warning them of potentially infringing third party applications)!

And, we have just made your brand protection even more flexible and affordable. All of our new Word Watch self-service packages are now discounted by 20% until Friday April 3rd 2020 in our Spring Sale! 

We don’t fool around with your brand protection at any time of the year!

New call-to-action

Comments