Secure a Competitive Advantage for Your Brand Through Strategic Trademarking

by Alex Johnson, attorney, Marger Johnson & McCollom, PC

Product names and logos seem so simple compared to the technologies they represent that companies often think that choosing and protecting these symbols is also simple. In reality, more effort should go into choosing and protecting these symbols than meets the eye. This is particularly the case if you’re striving to be unique and, ultimately, to build a brand. Moreover, because the world has become increasingly litigious, following some essential steps on the front end can increase your chances of avoiding painful litigation.

1. Avail yourself of the government protections of trademarks and service marks, which are used to identify and distinguish the goods and services of one company from those of others. In the software industry, trademarks apply to goods such as software, computers and peripherals, while service marks apply to functions or services that may or may not be obvious to the end customer.
2. Know what can be trademarked—words, designs and combinations of words and designs. For instance, a word mark may have a design element that’s very important to the uniqueness and distinguishing quality of the mark.
3. Choose a mark that distinguishes your product or service from similar products or services of others. As you can imagine, adopting and marketing a mark that you later must abandon and reinvent can be much more costly in the long run.

• Carefully select a name or word mark that is unique and not merely descriptive; arbitrary marks (Apple) and coined marks (XPRT) can be very effective.
• Use design features to make your word mark one-of-a-kind.
• Consult with trademark counsel that is experienced in selecting and registering marks for software and computer-based services.
• Before spending money to apply for registration—or to market and advertise your mark—perform thorough searches to ensure that your mark is not too close to marks already in use.
• Don’t depend on the searches that your corporate attorneys use to choose a corporate name. Such searches typically cover only the state corporate name registers and not the trademark and service mark database.
• A search on the U.S. Patent and Trademark Office (USPTO) Web site is an effective initial screening step. But don’t stop there.
• Check for availability of the word mark as a domain name; if available, register the domain name immediately.
• It’s a worthwhile upfront investment of money and time—just a matter of days—to work through your IP attorneys to obtain a professional search. Their enhanced access to information on already registered marks, as well as searching expertise—such as checking for variations on phonetics and spelling—will help you choose a mark that is unique.
4. The U.S. Patent and Trademark Office requires that when you apply to register a trademark for software, you identify the “field of use” in which the product will be used. Similarly, the services offered under a mark must be well-defined.
• In order to clearly define the field of use, your attorney must understand your business as well as what the software does.
• If your software is both sold as a product on its own and used by you to provide a service, you might need to register a “multi-class mark” for protection in both the “goods” and “services” categories.
• Even if your product or service seems to be behind the scenes--something that the end customer wouldn’t even know is there--make sure to trademark your wares and promote the mark. Think of Intel Corporation and its “Intel Inside®” campaign.
• If your software or service is used for more than one purpose or application, register the mark for each usage. Competent trademark counsel will know how to navigate the complicated system of identification of goods and services when applying to register a mark.
5. Although trademark registration is not subject to the same filing deadlines as patent application (i.e., before you disclose your invention in public), register early in order to preempt competitors. The “priority date” of your trademark will be your filing date, so if you file first, your trademark has priority over subsequently filed trademark applications.
6. Map out a registration strategy that matches your geographic sales footprint and future sales goals.
• Trademark registrations differ from other forms of intellectual property protection in that you can register on a federal level with the U.S. Patent and Trademark Office, which affords protection nationwide, and you also can register with individual states. Each affords unique protections.
• In some cases, companies register in both the federal and state systems. Your attorney will know how to weigh these options and devise a plan that meets your needs and goals.



Here are some factors to consider:

Federal registration

Pros:

• In order to apply for federal registration, you must be using the product/service in interstate or international commerce, or be intending to do so. The ability to apply for registration before actual use of a mark allows you to preempt your competitors.
• Applying for federal registration involves just one process and fee, and—if granted—affords protection nationwide.
• In addition, the protections you enjoy are consistent nationwide.

Cons:

• In the federal system, your trademark application may be subject to more stringent review, and may take a year or more to process.
• Your application is more likely to be opposed by your competitors or others who want to use similar marks.

State registration

Pros:

• State trademark registrations are relatively inexpensive.
• Trademark applications typically are processed and granted more quickly on the state level, and review is less stringent. So if you’re planning to sell only in a few states, or if you need protection quickly in order to get out ahead of your competitors, you might consider this option.

Cons:

• To register in individual states, you must already be using the mark, so you may not be able to get out ahead of your competitors as effectively as you can by applying for federal registration based on intent to use the mark.
• There are different protections from state to state and different renewal dates to track.
• If you’re selling your product or service in many states, the state-by-state route may be more expensive and time-consuming than registering through the federal system.

International

7. If you’re planning to sell your product or service internationally, in most cases you must register with each individual country. It’s a good idea, however, to research your options for streamlining the process and fees.
• For instance, you can register in most European countries at one time by filing a Community Trademark Application (CTM).
• You also can undergo a single filing process for 61 member countries of the Madrid Protocol treaty, which went into effect in 2003.
8. Once your registration is issued, make sure that your trademark appears with every reference to your product. Use a registration notice, such as ®, with the mark. This includes paperwork, advertising, labels, CD-ROMs, containers and load-on-open screens. Make sure your licensees use the proper trademark labeling and maintain your quality of goods or services. Conversely, if your own materials refer to any other company’s trademarked products or services, clearly identify their connection with the other company.
9. Police your marks to make sure other companies are not using marks that are too close to yours, referred to as “infringing,” or trying to register marks that encroach on yours. If you find a prospective infringer, you can sue in court for infringement. You also can block an encroaching registration by filing an “opposition” with the U.S. Patent and Trademark Office, or petition for the competing registration to be “canceled.” Trademark counsel can set up a “watch” to detect filings and publications of potentially conflicting marks.

Don’t become one of the many companies that are blindsided by trademark lawsuits—and often forced to abandon product names and build brand equity anew—because they’ve treaded too near to another company’s trademark or service mark. Instead, take preventative measures in advance by calling on experts to help you perform thorough due diligence that will lead you to safe trademark and service mark choices.

About the author
Alex Johnson is an attorney at Marger Johnson & McCollom, PC, a full-service intellectual property law firm headquartered in Portland. His extensive work in the software industry includes serving as lead counsel on Alappat (Tektronix) v. US Patent and Trademark office, which in 1994 set a new precedent allowing the patentability of software. He can be reached at 503-222-3613 or alexjohnson@techlaw.com. The above article is general information, not legal advice. Regarding a specific situation, seek competent intellectual property legal counsel.