Marking Your Territory


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As the market of pet products and services becomes more crowded, it becomes even more important to select a strong trademark for your products and services, and to ensure your trademarks are protected. But before you can select a good trademark, it is important to understand what a trademark is, for what purpose businesses adopt trademarks, and how one acquires trademark rights. 

A trademark is a word, phrase or logo that distinguishes a source of goods and services from the goods and services of another. Ideally, a trademark quickly conveys to consumers qualities of a product and/or the source of the goods and services offered under the trademark. For example, when I encounter the trademark KONG in the marketplace, I think good-quality products that are virtually indestructible by my feisty Lab/pointer mix, Brady. 

The primary objective of trademark law is to protect consumers from becoming confused or being deceived in the marketplace—not to protect businesses. However, trademark law can be leveraged to drive significant value to businesses.


How Do Trademark Rights Arise?
In the United States, trademark rights can arise one of two ways: (1) through use of a distinctive term in commerce (so-called “common law rights”), or (2) through filing a federal trademark application. Common law rights are limited to the geographic scope in which the trademark is actively used and marketed (e.g., where sales are made, advertisements are placed, etc.), whereas federal trademark registrations grant presumptive nationwide rights. A federal trademark application may be filed on a use basis (once the trademark is actually used in commerce) or on an intent-to-use basis before use in commerce begins, assuming you have a bona fide intent to use the trademark in connection with all the goods and services contained in the application.


Selecting a Strong Trademark
Potential trademarks are commonly classified on a sliding scale from so-called arbitrary or fanciful trademarks (the most protectable trademarks) to generic terms (terms that are not protectable as trademarks). An arbitrary or fanciful mark bears no relationship to the goods or services sold under the trademark. For this reason, arbitrary and fanciful marks work particularly well as source identifiers and stand out to consumers in the marketplace. Suggestive marks are also strong; such trademarks suggest but do not explicitly describe the goods or services sold under the trademark. Merely descriptive trademarks (trademarks that describe the goods and services offered under them) are only protectable upon a showing that the trademark has acquired distinctiveness in the eyes of consumers due to the owner’s longstanding and substantially exclusive use of the marks. Generic terms are not protectable because such terms are necessary for use by all businesses to describe certain kinds of goods or services.

If at all possible, an arbitrary or suggestive trademark should be selected, since such trademarks provide more value in the marketplace and are easier to enforce against third parties that may try to trade off your brand’s reputation by adopting similar trademarks. If necessary, a descriptive phrase can be used after the trademark to describe the nature of the goods or services to be offered under the mark to prospective consumers.

Once a trademark has been selected, it is important to conduct trademark clearance to assess the infringement risk associated with adopting the mark and, if desired, the likelihood that the United States Patent and Trademark Office will register your trademark. Attorneys typically engage third-party clearance search vendors to use sophisticated algorithms to search the federal trademark databases, state trademark databases, business name databases, domain name registrations and other possible sources of common law rights for third-party trademarks that may raise a risk of infringement or present a hurdle to federal trademark registration. Your attorney will then analyze the search and advise you regarding the infringement risk associated with your proposed trademark. 

If your attorney is able to clear the trademark for your use, you will receive the benefit of a clearance opinion from your law firm, which will protect you from increased damages for willful or reckless infringement in the event you are, nonetheless, ultimately found to have infringed third-party rights. Furthermore, conducting clearance prior to adopting a trademark can help you avoid an expensive and detrimental rebrand in response to an infringement claim down the road. Such claims typically arise when a company or product is taking off and cost far more than the cost of new packaging, as the goodwill developed in the minds of consumers is lost.

Ideally this entire process occurs well before the anticipated launch of the business or product that will use the trademark so that any identified issues can be resolved prior to the launch.


Protecting & Enforcing Your Trademarks
I always recommend that my clients file federal trademark applications for their core trademarks to secure presumptive nationwide rights in their trademarks. Trademark applications should be filed as early as possible since your filing date is significant for purposes of determining whether you or a third party should be granted a trademark registration for the same or similar trademarks. Getting an application on file effectively secures your place in line.

A trademark owner is obligated to enforce its rights in its trademark or risk the weakening of its trademark over time, loss of distinctiveness, and, in some cases, the forfeiture of legal remedies. As new parties enter the marketplace using similar trademarks, your rights in your trademark become narrower and more difficult to enforce. For this reason, it is advisable to employ trademark watch services to alert you to newly filed federal trademark applications and tools such as Google alerts to alert you to new common law trademarks. 

A strong trademark can provide significant value to your business—helping you to stand out from your competitors and increasing the value of your company in the eyes of potential investors or acquirers. Time and effort spent developing, protecting and enforcing your trademarks can pay dividends for years to come. Investing in protecting your trademark now will help ensure your company’s position in the exploding pet product industry in the future.


Emily Holmes is an intellectual property attorney in the Denver office of Brownstein Hyatt Farber Schreck. She can be reached at eholmes@bhfs.com and (303) 223-1142. 

 

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