January 06, 2017

Top 10 Trademark “To-Do’s” for Good Business Health in 2017

by Trey D'Mark Ology


Welcome to 2017! With a new year, comes new resolutions â often promises of being healthier and generally vowing to be better. While I was on a plane on Monday, a millennial guy seated next to me was writing out his list of new year's resolutions. One that caught my eye was a resolve to "do all my homework". While this made me chuckle, it is good advice for entrepreneurs and seasoned businesses alike. Have you done all your homework to ensure you are in good business health?

Too often, businesses ramp up on a shoestring budget without a focus on protecting your brands and business names. Ideally, all the trademark homework should be completed before the business launches, but that isn't always possible. Trademark protection is often relegated to the future if any when a business succeeds. But waiting until "later" may be too late to carve out the same level of protection that would have been available on the frontend. If budgetary or time constraints have you putting trademarks on your future "to-do" list, here is the top 10 list of trademark strategies for you. Calendar a specific date (and actually enter it into your calendar) when you will revisit your trademark strategy. Protect yourself to make sure you don't experience a disaster like Mariah Carey's New Year's Eve debacle.

TOP 10 TRADEMARK TO-DO'S FOR 2017:

Choose

â carefully select a mark that will have some power and help you cut through the clutter if consumers search for you online. Choose marks that are distinctive. Common words and descriptive wording are going to be used by numerous third parties and are going to be difficult to protect. For best results, make up a word (i.e. GOOGLE), or use a word that is arbitrary and has no real significance to your industry (i.e. APPLE for computers). You can add a descriptive tagline if you need to tell consumers what you do, but try to avoid descriptive terms in your primary brand.

Search

â make sure your mark is protectable and no one else is already using a similar mark who could sue you for infringement or demand you change mid-stream. It is far less expensive to do this homework before you invest in letterhead and signage.

Register

â lock-in your nationwide rights to use your trademarks by federally registering them with the U.S. Patent and Trademark Office. This includes your company name as well as the names of your products or service offerings, your logo designs, and any taglines or slogans.

Domain Names

â register all of the domain names associated with your trademarks and make sure the registrations are owned in the name of your business â not the names of individual employees or your web designer.

Think Global

â register your trademarks in any foreign country where you have customers, manufacturing, or distributors.

Website

â Ensure your website conveys a consistent brand message with your registered trademarks, and ensure you have a contract that specifically says you own the website if designed by another person.

Renew

â trademark registrations must be renewed periodically or they will be automatically cancelled. Don't miss these deadlines. Calendar them in your business calendars. For federal registrations, additional filings are due between the 5th and 6th anniversary of registration and at each 10 year anniversary.

Become Incontestable

â a federal registration gives you the opportunity to claim incontestability status once you have been registered for five years. Once granted, the registration may only be challenged on limited grounds.

Police

â periodically conduct at least an internet search to make sure no one else is using your brand. You can order a clearance search at strategic intervals to

Enforce

â if you learn of anyone using your mark, you have a duty to protect it or can lose your trademark rights. Work with an attorney to send cease and desist letters or take other appropriate actions to protect your brands.If you aren't willing to do your homework, then disaster may follow, Mariah Carey style. Another company who does take the steps to protect their brand could take over as the headlining act and force you to leave the stage and change your name.I don't think Mariah Carey is going to change her name anytime soon, but the horrid performance will live in infamy. The Coyote mascot for the Spurs even joined in the mockery with a hilarious reenactment. Click here for the video.

San Anti