Trademark credibility – Sarah Staines
What we knew about trademarks could be found on the back on a postage stamp – remember them? – but back in August 2015 we talked to our super smart lawyer friend Sarah Staines and had our name, logo and strapline trademarked. Not only did we get legal security but also credibility and peace of mind so we asked Sarah to explain why it is important to obtain the best protection possible for your trademarks.
Trade Name Protection: According to the US Patent and Trade Mark Office an average US citizen on an average day encounters 1500 trademarks. In the UK we can’t be far behind. Without us realising it the presence of trademarks becomes part of our memory and experience of the world.
Secure the value in your business
It is a well known business maxim that improving your return on marketing investment can vastly increase your revenue, profit and market share. Most successful businesses have successful brand identifiers (registered trademarks, trading names, product names, logos and domain names etc…). These can add substantial value to a business but like any other asset, sound investment in protection and management of an intellectual property portfolio is crucial to marketing success.
Step One: Clarifying ownership of existing marks
The first job is to research all existing marks owned or used by the company, find out whether agents are formally instructed and bring all the existing marks under one umbrella. A schedule should be prepared with the registration details, the dates of first use of unregistered marks, the renewal dates and planned costs for management and retention. This activity can also be carried out for domain names.
Step Two: Acquisitions and new uses
The company ought to carry out a detailed review of its current activities and its use of brand identifiers. This could lead to the filing of applications for registration of new marks or the extension of existing registrations into other countries. All trademarks are jurisdictional in nature and if your business has recently expanded out of the UK then it is important to recognise that your use of these marks or their registration in the UK are unlikely to provide you with any protection outside these shores. Are any of the existing marks redundant? That can help to formulate a strategy for renewing or discarding marks. Sometimes even if a mark is not being used or its use is about to cease it is still a good idea to maintain its registration for at least a period of “run off” in order to prevent a competitor from using it and gaining from your previous exploitation expenditure. The schedule prepared in Step One should be updated with all the new marks and domain names and notes regarding discarding or renewing marks. Use of a trading name or the name of an establishment does not give you national monopoly rights over that name. You may gain local restricted geographical rights but national monopoly rights are gained through trademark registration.
Step Three: Creating a long term strategy
In order to formulate a plan for trademark and domain name management you do need to plan ahead for your business’ medium and long term strategy. This enables your agents or IP lawyers to take into account any plans for expansion or acquisition and also enables them to prepare for a planned exit or sale. It is common for potential purchasers and investors (be they banks, business angels, or venture capitalists) to feel more comfortable with a company that recognises the value of its intellectual property asset bank by the presentation of a well managed portfolio. It is useful to have a domain name strategy, what to buy and when, your strategy needs to be effective (to prevent cyber squatters and deter competitors) but not too over enthusiastic (cost being the issue). Once these plans have been taken into account a formal budget can be prepared for the future management of the IP portfolio. In addition, consider proposals for exploitation (by licensing or sales to third parties) if this appears appropriate. Also consider how the marks should be owned (either within the general trading entity, in a holding company or in a separate IP asset company; onshore or offshore). Each business will have tax and/or risk considerations for IP holdings and each case is considered on its own merits. Your IP lawyers will work with the company’s own or recommended specialist (international) tax experts to help the company to formulate plans for business structure changes, if the IP portfolio is significant.
Step Four: The paper trail
From this point onwards you can rely on your IP lawyers or trademark agents to manage the trademarks and domain names. They may have to file applications for registration, notify transfer of ownership or just keep a watchful eye on the registrations. By bringing them all under one management you can be sure that renewals will not be missed and that they will be ensuring that no renewal is mistakenly made by an agent with whom you have no relationship. At this stage consider the cost effectiveness of the portfolio in general and of each mark (or domain name) by enquiring in plenty of time before renewal as to its current and planned use within your business. You can agree with your agent or IP lawyer how actively you want them to manage the portfolio and together, you can formulate guidelines for use within your business to ensure that all new potential trademarks and domain names are captured and protected appropriately.
Step Five: Ensuring consistent use
Once you have a well managed trademark and domain name portfolio then it is necessary to ensure clear guidelines are followed throughout the company in the use of the brand identifiers. Consistency of approach is the key to brand recognition. Mixed messages or inconsistent use leaves the customer in confusion. One purpose of a brand identifier is to convince the customer to say: “That’s the place (or that’s the product or service) that I so enjoyed last time, I want that experience again”.
It is not just companies that have intellectual property as their core business activity or those with patented products that need to protect and manage their portfolio of trademarks and domain names. Every company that trades can enhance their brand success by judicious marketing investment in identifying, protecting and managing their IP.
Sarah Staines LLM (Solicitor – retired).