“What a great brand.” This is what you want to hear from your marketing people, competitors and customers. Unfortunately coming up with a great brand or trademark from both a marketing and legal standpoint can be easier said than done. Your marketing people want something that is memorable and tells the prospective customer something about the goods or services. Your trademark counsel will advise you that the more the trademark describes the product or services, the weaker it is and the harder it will be to protect from competitors who copy your successful brand. And then there is the risk that you’ve come too close to someone else’s brand, even if you’ve never heard of them.
How to Get it Right
So what is a company to do to be sure to get it right? First, you need an open dialogue between your creative executives and your trademark counsel.
Your counsel must understand your business and educate your creative team quickly and in plain English. You need an attorney that knows the nuances of trademark and copyright law and how to come up with creative solutions that your marketing team can work with. If you commit to your brand, without the advise of counsel, even if you do so in good faith, you could be unintentionally infringing on someone else’s trademark rights–which could cost you big money to defend yourself if you get sued.
The cost is not only legal fees and potential damages, but you have also lost all the time and effort put into the wrong trademark.
A trademark clearance search will identify potentially risky trademarks, and a good trademark lawyer knows how to suggest modifications to problem trademarks to reduce the risk of moving forward.There are ways to clean up some trademark mistakes, but it is far better and cheaper to do it right the first time. Conducting clearance, filing trademark applications in the countries that you intend to do business, and letting infringers know quickly that you won’t tolerate violation of your rights is the right way to pick and grow your valuable intellectual property.
By Angie Small, Attorney at Law. Angela Small Booth* has been licensed to practice law in California for over 23 years. Angie has literally handled many thousands of trademark registrations in the U.S. and throughout the world on behalf of a variety of clients– from large multinational entertainment studios to small family-run businesses. She managed the worldwide intellectual property portfolio for Mighty Morphin Power Rangers for eight years, and also worked for the United States Patent and Trademark Office. Angie can be contacted at angie@angiesmall.org or 310-497-1351.