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The fundamental strategy for maximizing the power of a trademark is consistent, continual and repeated USE of the trademark. Trademarks are, of course, designs, logos, words or other symbols that identify a particular commercial source of a product or service. USE of the trademark is required for a trademark to even exist. And, USE of a trademark is legally required for a trademark to be registered and to have the maximum amount of legal protection. But USE is also the fundamental strategy for maximizing the power of a trademark. Use the trademark on the product itself (if possible and appropriate). Use the trademark on packaging, on instructions and warranty cards, on your website, in correspondence, on buildings and signage, on trucks and company vehicles, on employee uniforms, on checks and pay stubs and on or with anything else. The more your trademark is used, the more likely consumers and customers will recognize the trademark and associate the trademark with the product or services being offered.
Consistent use is also important. In other words, use the whole and complete trademark continually and repeatedly, not the trademark with some element added or something removed. If you add or subtract from the trademark, then you weaken your trademark, minimizing its power. Further, adding or subtracting elements creates a new trademark from a legal and marketing standpoint.
This leads to another strategy for maximizing the power of a trademark — focus on promoting one trademark at a time. A powerful trademark creates customer loyalty and drives sales. Thus, when starting out, it is essential to focus and promote and market one primary trademark. Once that primary trademark is well-established, registered and beginning to become famous, then secondary and affiliated trademarks can be launched. But here, too, the best strategy is to focus on one new trademark at a time.
Creating a powerful trademark is also about generating a pleasant emotional reaction in the mind of the consumer when they see or experience the trademark. At a practical level, one strategy for maximizing a trademark’s power is to use it and associate it with positive imagery, colors and personalities. “Positive” in this sense depends on the product or service being offered and the customer base. Thus, a trademark associated with fine jewelry might have a different kind of “positive” imagery than images used for a trademark associated with a grunge or death metal music group.
Along the same lines, another practical strategy for maximizing the power of your trademark is to associate it with concepts and ideas that are appropriate for the product/service and “fit” with how customers view and use the product/service. When consumers see and experience the trademark, they associate it with those concepts and ideas. Trademarks gain power by triggering a “trigger response” in the human brain. The best trademarks trigger a cascade of memories, associations and emotional reactions that are positive and reinforcing. Obviously, negative associations must be avoided. Creating positive associations helps build a powerful trademark and, thus, a powerful business.
Consistent use alone does not give a trademark maximum legal protection. Federal registration with the USPTO on the Principal Register is the single most important legal step in maximizing your trademark’s power. Registration provides constructive notice to the entire country that you claim the mark, gives you the presumptive right to use the mark nationwide, and — after five years of continuous use — entitles you to file for incontestability under 15 U.S.C. § 1065, which dramatically limits the grounds on which competitors can challenge your mark. An incontestable registration cannot be challenged on likelihood of confusion with a prior mark or on the ground that the mark is merely descriptive — two of the most common grounds for opposition and cancellation.
When filing your trademark application, choose the right International Classes carefully. A trademark is only protected in the goods and services classes for which it is registered. If you register in Class 25 (clothing) but your business later expands into Class 18 (leather goods and bags), competitors can register identical or similar marks in Class 18 because your registration provides no protection there. Reviewing your business plan at the time of filing and registering in all classes where you intend to use the mark within the next three years is a proactive strategy that costs far less than the litigation required to stop an infringer who has registered in a class you overlooked.
A trademark owner who does not actively police and enforce the mark risks losing it. Courts have held that a trademark owner who allows widespread third-party use of a confusingly similar mark without taking action may be deemed to have abandoned the mark or acquiesced to the infringement — creating an implied license or an equitable bar to later enforcement. The doctrine of laches can prevent a trademark owner from recovering damages for infringement that the owner knew about but did nothing to stop for an extended period.
Practical monitoring strategies include:
A registered trademark must be actively maintained to remain on the Principal Register. Between the fifth and sixth year after registration, you must file a Section 8 Declaration of Continued Use, accompanied by a specimen showing current use of the mark in commerce. The same declaration is required between the ninth and tenth year, and every ten years thereafter (combined with a Section 9 renewal filing). Failure to file these maintenance documents results in cancellation of the registration — and cancellation eliminates all of the legal advantages of federal registration, potentially allowing a competitor to register an identical mark.
The specimens submitted with maintenance filings must show actual current use of the mark in commerce. Submitting a specimen showing the mark as it was used years ago — when the current use of the mark has changed — can expose the registration to cancellation on grounds of fraud before the USPTO. Review your specimens carefully at each renewal cycle and ensure they accurately represent your current trademark use.
The most powerful form of trademark protection is “famous” trademark status under 15 U.S.C. § 1125(c). A famous trademark — think Coca-Cola, Apple, or Nike — is entitled to protection from dilution regardless of whether the competing use causes consumer confusion. This means competitors cannot use a famous mark even in completely unrelated markets. Building toward famous trademark status requires sustained investment in advertising, consistent quality of the associated goods or services, and geographic breadth of use. Courts consider the duration and extent of advertising, the volume of sales under the mark, and the extent of actual consumer recognition of the mark as famous. While few marks ever reach this threshold, every strategy discussed above — consistent use, aggressive registration, active enforcement, and strong brand associations — moves a mark along the path toward it.
Revision Legal’s trademark attorneys help clients build, register, and enforce powerful trademark portfolios. Whether you are launching a new brand or strengthening an existing one, contact us today to discuss a trademark strategy tailored to your business.
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