In Part I, we briefly covered what you must do to protect a trademark. In short, you don’t own your brand until you trademark it. Obtaining your federal trademark is the (critical) first step of that process; however, you must continue with maintaining your trademark to ensure that you retain those rights. This includes both filing the appropriate articles of renewal, as well as appropriately policing your mark.

“Policing” a trademark

In short, this can be summarized as actively protecting your mark, making sure that other businesses out there are not using your registered trademark as their own name, logo, etc. This sounds intuitive, but when theory becomes practice, what exactly does this look like?

A client case study:

Recently, a client (unknowingly) demonstrated the exact way that I would recommend trademark owners proceed with protecting their trademark, and I want to use her as an example of how to protect one’s trademark properly.

First, this client has taken it upon herself to not only continue to rely upon legal counsel even after receiving her trademark registration, but she has also kept a watchful eye on potential infringers on her own. After all, she knows that no one will understand her brand better than she will.

Aside from the practicality aspect, a note on her perspective of this task: she is an incredibly kind and caring person. She built this business from absolute scratch, and knows just as well as anyone what it feels like to build a business from nothing and turn it into a booming brand. With that, she is not “policing her trademark” from a perspective of being aggressive to other startup businesses out there- she simply knows that value of her brand, and recognizes that need to continue protecting it.

Which leads to, our second takeaway: she has pulled an extensive list of potential infringers. “Potential” being the operative word: she is not conducting a witch hunt; instead, she is collecting all potentially relevant data, and turning to counsel to help ascertain what constitutes a legitimate threat, and what does not.

Third, what happens when a trademark attorney is approached by a client such as mine, with a list of potential names and questions about how to proceed? This portion should be handled with extreme precision:

1. Create a spreadsheet of what names may be infringing upon the registered mark
2. In the spreadsheet, note where each business is located, and what products/goods/services they are producing, and what overlaps with the client
3. Note the date that the business began producing #2
4. Determine which constitute potential infringement according to the points listed above, and determine which require action, such as cease and desist letters.
5. On the spreadsheet, record any and all communications with the potential infringer

Why something as technical as a spreadsheet: to be blunt, because you must build a record now if you want to protect your trademark later. In some cases, a trademark that has been potentially diluted over time (ie, other similar names/logos etc are allowed to file for registration, among other factors), must be able to prove to the USPTO, with detail, the ways in which they have actively protected their mark, thereby proving that the trademark still warrants federal protection for distinctiveness.

Conclusion:

In the third installment of this series, we’ll discuss the when, what, and how of cease and desist letters. For now: if you have a trademark (common law OR registered), please begin keeping a spreadsheet list as referenced above. No matter if you have, or want to, obtain federal protection of your business name, you must prove that you deserve such protection based upon distinctiveness.

Keep an eye out for installment three of this series, and in the meantime, reach out to us at hello@paigehulse.com for your trademark questions!