How to Protect Your Trademark

Choosing a strong trademark is one of the best things you can do to protect your brand. A strong mark not only helps your company stand out, but it adds muscle to your trademark rights.

Trademark strength is split into five levels. Moving from strongest to weakest, these include: fanciful, arbitrary, suggestive, descriptive, and generic.

Strong trademarks are better protected than their weaker counterparts because of their distinctiveness. The more creative and distinct your trademark is, the better it acts as a “source identifier” for your goods/services—and the easier it is to claim as yours.

If a trademark is too weak to act as an identifier (looking at you generic marks), it cannot be registered by the United States Patent and Trademark Office (USPTO).

When you use Northwest’s Trademark Service, we assess the strength of your trademark and provide feedback if we discover it is lacking.

Once you’ve chosen a strong trademark, the next step is to make sure it’s not already in use by another business. A thorough clearance search involves digging through websites and databases like:

• Trademark Official Gazette
• Trademark Electronic Search System (TESS)
• State business registries
• State trademark databases
• Domain registries
• Social media
• General search engines

What should I look for in a clearance search?

During a clearance search, you’re looking for likelihood of confusion. This concept asks whether similar marks could reasonably lead to consumer confusion about who is providing the goods/services.

For example, Dove® is a registered trademark of two brands: one that sells chocolates, and another that sells soaps. Likelihood of confusion doesn’t exist here because the products in question are totally separate. But if Dove Cookies wanted a trademark, they may be met with resistance—it would be reasonable for consumers to assume cookies and chocolates are coming from the same company.

When protecting your trademark, it’s important to make sure it can be protected across online platforms. This especially matters for those whose trademark and business name are one and the same. When consumers search for your brand online, you want them to find your business, not someone else’s.

• Social Media
  Run through the social media platforms you use (and even the ones you don’t) to see if your trademark is available as a handle. If it is, yay! Snatch it up. If it’s not, boo. Consider whether there’s a suitable alternative or if you need to return to the trademark drawing board.
• Website Domain
  Having a domain that matches your business name is a valuable brand asset. (In certain circumstances, you can even trademark your domain.) If you’re trademarking a catchphrase or tagline, these can be valuable domains, too. Check to see if your trademark is available as a domain and consider buying it right away if it’s up for grabs. If it’s not, brainstorm different domain options or change up your mark.

After confirming that your trademark is unique within its industry and strong, the next layer of protection is to seek federal trademark registration. By registering your mark with the USPTO, you receive the broadest national trademark protections available.

So, what rights and protections do you earn with federal registration that you don’t otherwise qualify for?

• Use of ® symbol
• Ability to sue for trademark infringement in federal court
• Protection and enforcement abilities in all 50 states
• Customs and border enforcement

The federal registration process generally takes at least 12 months to complete, but can take longer. Filing costs a minimum of $250 or $350, depending on the type of trademark application you use.

Throughout the registration process, pay careful attention to correspondence from the USPTO and any new deadlines that come up. It is common for applications to receive office actions, and failing to respond can lead to your trademark application being abandoned.

Once your trademark is registered, protection takes the form of monitoring for infringement and enforcing your trademark rights.

Trademark monitoring is similar in scope to a clearance search, involving digging through the same kinds of sites and databases. But where a clearance search is typically a one-time thing, trademark monitoring is most successful if done regularly throughout the life of your trademark.

You can monitor your trademark yourself or you can hire a trademark monitoring service, which uses software to do this legwork for you.

What if I discover trademark infringement?

If and when trademark monitoring reveals infringement, there are a few routes you can take to protect your mark. Suitable options will depend on circumstances like the extent of infringement and when it was discovered. It may be helpful to talk to a trademark attorney about your options.

Some infringement remedies include:

• Sending a cease and desist letter
• Suing in federal court
• Petitioning to cancel a registered trademark
• Opposing a trademark application

When you use our Trademark Service, you can hire Law on Call’s attorneys to draft and send an infringement-related cease and desist letter.

Maintaining your trademark is one final piece of the protection puzzle. In order for a federally registered trademark to stay registered and hold on to its protections, it must be regularly renewed.

The federal trademark renewal process breaks down like this:

• Years 5-6
  The first trademark renewal filing is due between years 5 and 6 following registration. Submit the Declaration of Use and/or Excusable Nonuse under section 8, along with $225 per class.
• Every 10 years
  The next trademark renewal filing is due between years 9 and 10 post registration. Submit the combined Declaration of Use and/or Excusable Nonuse and an Application for Renewal under sections 8 and 9, along with $525 per class. This filing will be due on a 10-year rotation for the life of your trademark.