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What Serious Trademark Owners Do

Posted in Trademark Bullying, Trademarks

There are many things that serious trademark owners do throughout the lifecycle of a trademark to mitigate risk, protect the valuable goodwill in their underlying brand, and preserve their valuable investment in this important intellectual property asset. Here is a fairly extensive, but certainly not exhaustive, and often forgotten, list of those things:

  1. Clear new marks before using them even if “only” for brand extensions;
  2. Understand the pros and cons of different name styles;
  3. Adopt suggestive marks over merely descriptive ones;
  4. Self-police marketing materials to keep marks suggestive and non-functional;
  5. Steer clear from the D-word;
  6. Appreciate the pros and cons of non-verbal wordless logos;
  7. Strive to own logos that can truly stand alone without words;
  8. Spend time developing an acceptable generic name too when launching new brand;
  9. Develop non-traditional trademarks;
  10. Recognize the power of federal trademark registration;
  11. Know when concurrent trademark registration makes sense;
  12. Appreciate the paradox of brand protection;
  13. Attend to brand strength and understand the importance of trademark enforcement;
  14. Educate themselves about trademark likelihood of confusion issues;
  15. Prefer their own creativity over borrowing the creativity of others;
  16. Question how realistic the risk of trademark genericide is for them;
  17. When realistic, they take concrete steps to avoid the perils of trademark genericide;
  18. Develop plans to avoid trademark abandonment;
  19. Avoid bona fide allegations and findings of trademark fraud, trademark bullying and reverse domain name hijacking;
  20. Know what a touchmark is;
  21. When appropriate, they pick up the phone before writing a demand letter;
  22. Follow Seth Godin’s marketing advice, but avoid his trademark advice;
  23. Manage the legal risks of verbing trademarks and brands;
  24. Appreciate the limits of the nominative trademark fair use defense;
  25. Steer clear of Dr. No on the Parade of Horribles;
  26. Hire trademark counsel prepared and expected to take a position; and
  27. Of course, read DuetsBlog every day and note the milestones along the way.

Now, this is not to say that trademark owners who don’t do each of these things is comedic or not to be taken seriously, but many at least consider or should consider doing these things.