Holistic Brand Protection

In today’s interconnected world, just registering your trademark with the USPTO may not be enough to ensure protection of your brand.  You should consider taking additional steps to ensure your brand’s protection and prevent it from being hijacked by other parties.  Strategies to increase brand security may include any or all of the following:

The first step, of course, is to select and adopt a strong, inherently registrable trademark. This means a mark that is not merely descriptive of your goods or services – rather, you should select, clear, adopt and register a mark that is suggestive, arbitrary or fanciful.  Once you have accomplished this step, the following steps may be beneficial:

Pre-emptively applying for trademark registrations in other countries or regions, particularly in China and the European Union.  China is a first to file jurisdiction, which means that the first entity to file the trademark application has priority of rights.  Under a first-to-file regime, the first filed trademark is given full protection under the law and can block subsequent trademarks from registration or use.  Thus, being first to file in China ordinarily gives you the ownership of the mark in China. For this reason, if you anticipate entering the Chinese market within the next few years, you would want to expeditiously file for registration of your TM in China.  If you file in China within six months of the date of filing of your U.S. application, your Chinese TM application can be given the benefit of the U.S. filing date. 

Subscribe for trademark watch services.  This is the most essential step for protecting your brand beyond registering your mark.  A trademark watch will afford you the opportunity to oppose infringing trademark applications in the watched jurisdictions.  A comprehensive watch would include not only trademark application filings, but common law watching to alert you of infringement in the marketplace including online.  Domain name watches are also advisable to protect against cyberquatting.  A worldwide watch alerts you to infringing applications in two hundred different countries.

Preemptively register domain names.  This can be done for all top level domains on an as available basis. 

For additional protection, you would want to register your trademark with the Trademark Clearinghouse and participate in Sunrise period registrations for new top level domains as appropriate.  Registering with the Clearinghouse will also provide you with the benefit of the claims notification service by which applicants for new top level domain names that include your registered mark will be notified of your trademark, and if a new top level domain name incorporating your trademark is registered, you will be notified.  You may also wish to engage a domain blocking service for new top level domains. These services can block registration of your registered trademark as a domain name across a whole set of top level domains.

Please call to discuss holistic brand protection for your company.