5 Essential Steps to Protecting a Trademark

Nick Potts,

Losing a trademark battle can have devastating effects on your business.

Fighting to protect a trademark in court is also expensive and time-consuming.

The monetary cost is excruciating, the attention can be disastrous, and you could be forced to rework your entire marketing strategy.

Protecting your trademarks is a never-ending battle—but a lot of companies make it harder than it has to be or they fail to effectively monitor their trademarks, leaving themselves vulnerable. It doesn't have to be this way.

There is a way to effectively monitor and protect your trademarks without overspending or hiring an army to review watch reports day and night. Understanding the steps to take, leveraging new technology, and integrating your processes can make protecting trademarks much easier.

Protecting Your Trademarks

When it comes to securing your trademarks, hiring a lawyer or having the right tools at your disposal can make all the difference.

A lawyer can do most of the legwork for you, using their knowledge of trademark law to help you secure and defend your marks. On the other hand, tools and applications will let you take matters into your own hands, helping to identify possible risks and issues along the way.

No matter which path you choose to protect your marks, there is a series of steps you can take to ensure you are set up for success.

1. Set the Stage

A good defensive game plan starts with the offense.

Before registering, it’s important to have complete certainty that you aren’t walking the fine line of brand confusion. Because, without knowing you can defend it, the mark may be expensive to protect or, in the worst cases, already lost.

Ensuring your trademark is defendable prior to registering goes a long way to helping you protect it. Check out some different tools or techniques that can help.

2. Register Everything Associated with Your Mark

Once you’re sure there’s no chance of confusion with your mark, it’s important to register everything around it. This includes your company’s name, logo, slogans, and product names. Anything that references your trademark should be registered at the same time.

By owning these marks, you’re stopping someone else from grabbing them for themselves. In the same manner, you should register any ideas you have for future use. Protecting them now means you’re guaranteed to have them later.

Until you register the marks in your portfolio, keep them hidden from your competitors. If they register a mark before you put it into use, it will force you to rework your marketing plan, or pay them for the rights.

3. Register All of Your Social Handles

Few things would be worse than registering your businesses name but losing the ability to have matching social profiles. A large portion of digital marketing falls on those social media accounts and having identical names can be the difference between a customer finding you or finding your competitor.

Register “@mycompany” on Twitter, and Facebook.com/”mycompany” to maintain rights to them. Do the same for any brand pages or products for which you plan to run separate profiles.

Online Account Profiles You Should Consider Claiming:

  • Facebook
  • Twitter
  • Instagram
  • Snapchat
  • Medium
  • Reddit
  • Tumblr
  • GitHub
  • LinkedIn
  • Ebay
  • Twitch
  • Skype
  • Pinterist
  • Google Plus
  • Youtube

Note: Depending on the service or product, some of these may not be relevant. For instance, food products might not have to worry about software development platforms, like GitHub. Still, it doesn't hurt to reserve your Trademark on any platforms that are even remotely relevant.

4. Maintain Your Registration

When it comes to registering with the USPTO, you need to stay up to date with your mark’s status. The USPTO will not send reminders for maintenance documents.

Between the 5th and 6th years after a mark’s registration date, you’ll be required to update documentation. If you fail to complete the paperwork, your mark could be canceled or lost.

Although they may not warn you before this happens, the USPTO will at least stop other similar or confusing marks from being registered. This is helpful, but any other issues surrounding marks are up to you to monitor.

5. Monitor Your Marks

Monitoring your trademarks—it sounds simple, but you would be surprised how many trademarks are just sitting there with no one paying attention to them.

Some of our customers have huge portfolios of trademarks. Before they became our customers, they had to pay thousands of dollars for watch reports for each trademark. These watch reports would be pages upon pages of potential infringers some human had to spend time reviewing.

At the end of the day (or week), 90% of those watch reports are generally found to be junk results. In other words, some human spent hours looking over trademarks that were not worth reviewing.

The result? Companies with a lot of trademarks started to watch only their "crown jewel" marks.

Trademarks that are deemed less important were left to collect dust in a filing cabinet somewhere. That isn't necessarily a bad thing—until that trademark is compromised. Then someone has to give an account as to why it wasn't being watched. Because of this, some countries are adopting a judicial stance where, if you weren't watching your trademarks, the judge would look unfavorably on your case in court.

Companies will eventually be forced to realize the necessity of keeping tabs on all of their trademarks, not just the ones deemed most important at any given time. Our customers enjoy NameWatch, which features an easy-to-read dashboard that effectively replaces old-style watch reports and makes monitoring multiple trademarks easier.

Your Trademark Defense

Maintaining a strong trademark monitoring strategy is your key to establishing a thorough defense.

By keeping tabs on what trademarks your competitors are registering, you’re able to stay a few steps ahead. Monitor for trademark infringements and brand confusion in order to defend your brand, your business, and your customers.

Doing this doesn’t have to be hard. Leveraging modern technology can make it easier and provide you with a more comprehensive strategy. Check out NameWatch to monitor your portfolio and your competitors and to spot any similar marks you’re missing.


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