Establishing a Corporate Trademark Procedure

By John DiGiacomo

Establishing Corporate Trademark Procedures

Because trademarks can be so valuable to a corporation, it is essential for companies to implement internal procedures aimed at protecting those marks. These procedures should govern the creation, registration, and defending of the corporation’s trademarks.

Selecting the mark

IP managers should have a solid understanding of the trademark process. That manager should also educate the employees at the company responsible for generating new trademark ideas. This will save a lot of work and frustration by eliminating the creation of weak marks from the outset. Weak marks are those that are descriptive (“preferred”), suggestive (Citi-Bank as a hip, urban bank) or worse yet, generic (“Light” Beer). Strong marks generally have little to no connection to the product (“Apple” computers). The stronger the mark, the easier it is to defend against infringement.

Once selected, a proposed mark should be passed to whatever person or group is in charge of clearing the mark. The clearance group or individual should be given the proposed mark, the services for which the mark will be used, and a potential marketing timetable for its introduction into the market.

Registering the mark

While going through clearance, a proposed mark can be informally checked for originality using a preliminary trademark search. In-house or outside counsel can conduct the search quickly, just to make sure there are no obvious competing marks already registered. This will also help eliminate some marks if several were proposed. The preliminary search can be completed on the United States Patent and Trademark Office website, where registered and pending marks are listed.

If the proposed mark passes the preliminary search, a full search should be conducted using an attorney. If the mark survives the full search, it should be queued up for registration.

Defending the mark

It is especially important for a corporation to have procedures in place to defend trademarks. Depending on the size of the company, that could mean an in-house IP litigation team, or it could mean go-to outside counsel well versed in trademark protection. Trademarks survive as long as they are protected, and the owner of the mark must be the watchful eye and vigilant defender of its mark.

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