Ten Things Trademark Attorneys Wish All Their Clients Knew

Nadaline Webster,

There are core fundamentals at the heart of every arena of life and trademark law is no exception. For the trademark attorneys who help their clients create and protect strong brands, communicating these core fundamentals is essential to their role. So what might they want you to understand about trademarks?

Here are a few things to think about:

1. Your Intellectual Property is valuable

For those less experienced in the intellectual property world, the creation of intellectual property in general and trademarks in particular can be seen as ‘box-ticking’ exercise. It’s something that you feel you have to have and so you follow the steps. The trademarks that you create underpin your business and allow you to protect it. Many don’t realise the value of them until they are under threat or the full cost of losing them is applied to the company’s bank balance. While it is human nature to think this way about many aspects of life, valuing your IP from the get go and being aware of what it can or will contribute to the success of your company can save a lot of heartache down the road.

2. Originality is key

All intellectual property, whether you are talking about patents, trademarks or copyright, is a creation of the mind that must be original to be protectable. You would not be able to obtain viable copyright of a painting that is a copy of another painting. Trademarks are no different. Creating something unique rather than attempting to follow the herd will always be to your long term benefit.

3. Avoiding consumer confusion is at the centre of trademark law

This fact makes the need for originality even stronger. The essential issue in oppositions to your trademark registration or in infringement claims is the likelihood of the average consumer of the products becoming confused as to the source of the goods they purchased. While the trademark systems vary from region to region around the world, the ‘likelihood of confusion’ principle applies virtually everywhere.

4. A trademark is an identity, not a product

There is a key difference between trademarks and other forms of intellectual property. All other types of IP protect a product of one form or another. A trademark protects the identity of the source of the products rather than the product itself. As an example, the Apple logo is instantly recognisable around the world but the function of the registered trademark is to state that the product you have purchased came from Apple Inc. Any potential trademark infringement claim would not address any similarity in the products offered (although this may also play a role in creating an impression) but instead would address a potential impression that a product was manufactured by Apple Inc in circumstances where such was not the case.

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5. No trademark clearance search is exhaustive but might be more important than you think

No matter how robust your clearance process might be, it can never be considered to be completely exhaustive. Nor can it perform as a crystal ball seeing years into the future to protect you from challenges that may not even exist today. Nonetheless, it is an important step. How important that step might be will depend on your country, your business, your industry and your strategy for the future but there are benefits to having taken this step in the process that exceed merely assessing registrability.

6. Odds are that there will be challenges

I have no insight whatsoever on how many trademarks have been registered that have never experienced a challenge of one sort or another throughout the entire lifecycle of that trademark but I would be willing to bet that more of them experience problems than you might imagine. From simply being a victim of their own success inspiring counterfeits globally to trying to extend protection across more regions or the evolution of the business meaning a change to the goods and services provided, the number of unforeseen circumstances in which you can run into trouble are myriad.

7. Registrability and protectability are two very different things

In many cases, or at least in the initial stages, those charged with creating the IP for their company often understandably tend to focus on registrability and there is no doubt that it is important. But there is a huge difference between a trademark that can obtain a registration and one that can more easily be protected, particularly as you extend protection across multiple regions. It’s not the only factor but this is one area in which originality really does come into play. The more unique and distinctive your brands, the easier they will be to protect long term. To quote Oscar Wilde - “Be yourself. Everyone else is already taken”

8. Lack of protectability can come with a really big price tag

Failure to adequately protect your trademarks (or perhaps worse yet, creating trademarks that attract actions for infringement) has the potential to cost much more than many anticipate. At the more dramatic end of the scale, a complete re-branding of products could be required leading to thousands of lost dollars in unusable packaging or products along with time lost in a fast moving marketplace. Trademarks are an investment in the future of your business and it makes sense to approach that investment as cautiously as you would the stock market.

9. Monitoring your marks matters more than you might think

Not all trademarks are created equal and this shows strongly in discussions with businesses of all sizes around their watching strategies. Core business trademarks tend to get the most attention for obvious reasons and in some cases, short product life-cycles in some industries make monitoring against infringement unnecessary. That said, many attorneys express concern that clients do not monitor their trademarks to the extent that they could or perhaps should. Traditional time-consuming and high costs methods of watching have had a big impact here but much more effective and lower cost solutions exist today. If you haven’t recently done so, re-evaluating both your watching strategy and the tools available might be a worthwhile investment.

10. When and how you use your trademarks is every bit as important as their creation and registration

Trademarks are as strongly connected to when and how they are used as they are to ‘likelihood of confusion’. Even quite small changes to a registered trademark used on packaging, for example, can have catastrophic consequences. During the evolution of any business, it is certainly not unusual for the products provided to change - sometimes to a completely different one. Instituting a best practice policy of examining your existing registration when making changes either to the brand, the packaging or the products or services themselves to ensure that they still match the registration can head many potential issues off at the pass.

The world of trademarks is a far more complex one than it might appear on the surface or to the eye of the general public. Key considerations will vary from region to region and across industries too. This short list of things your trademark attorney might like you to understand is far from complete and all additions or suggestions are most welcome! You can email them directly to nadaline.webster@trademarknow.com.

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