A few bits of trademark advice recently passed across my screen from The Marketing Blog: Turning Entrepreneurs Into Marketers — advice that I believe deserves some friendly comment and critique, leaving you to decide whether any of it rises to the level of brilliant trademark advice or sinks to the level of trademark baloney:
“Trademark as you go. Don’t wait until you have a bunch of stuff to trademark before you decide to move on it.”
“By seeking to protect something with a trademark, you’re also taking on some obligations. One of which is an obligation to police the market for competing trademarks that might be problematic.”
“A trademark doesn’t act as a shield as much as a sword. It doesn’t actively protect you against much of anything.”
1. Keeping “Trademark” Terminology Straight: From each of these excerpts, what becomes apparent, at first, is the need to make sure the use of the term “trademark” is clear to the reader. From the context of the entire blog post, it appears the author is using the term as a verb to reference the act of seeking federal registration and also as a noun to reference the hopeful business asset resulting from that process, namely, a federal trademark registration.
For more on the various meanings of the term “trademark” to keep clear in your communications, feel free to refresh your memory by reviewing these prior posts:
- What Does “Trademark” Mean to You?
- IP Grammar . . . and Those Who Cringe About It
- What Does “Trademarked” Mean to You?
2. The Timing of Seeking Trademark Registration: The “trademark as you go” comment seems to mean, register your trademarks as you go, as you create them, and that direction is hard to argue with given the geographic limitations of common law unregistered trademark rights. Indeed, the cost of waiting to register until after commencing use can be quite high in some cases.
Of course, the best time to file for and seek registration is immediately after the necessary due diligence has been done to clear the proposed mark for actual commercial use in the marketplace (for reasons we have already discussed).
3. The “Obligation to Police” Trademarks: To the extent the the author is suggesting that unregistered common law trademarks are free of any “obligation” to enforce and the mere act of registration creates such an “obligation,” the suggestion is incorrect. Without an appropriate level of policing and enforcement trademark rights will shrink over time, whether or not the mark in question is federally registered.
And, as to the “obligation” comment, in general, savvy Duets Blog readers already know that the referenced “obligation to police” is overblown. Indeed, it is more helpful and accurate to think in terms of consequences of failing to act, not in terms of breached obligations or duties.
4. The Trademark Registration as a Sword and a Shield: To conclude that a trademark registration “doesn’t actively protect you against much of anything,” ignores a significant benefit of registration, namely, nationwide constructive use, which can serve as an amazing shield in fending off challenges to a trademark owners growing and expanded geographic use over time.
It also ignores the statutorily required protection the USPTO undertakes on behalf of federal trademark registrants in preventing others from registering marks that conflict with prior registered marks because of a likelihood of confusion — according to Section 2(d) of the Lanham Act.
Clearly, a trademark registration acts as a valuable sword and shield.
So, what say you, dear readers, brilliant advice or baloney, or perhaps something in between?