brand protection

A brand manager is the custodian of a valuable company asset and obliged to protect it for the benefit of the company and its customers. Here are four general strategies for effective brand protection that a brand manager should be putting to use in today’s business climate:


1. Advocate for Strong Trademarks to Represent the Brand

Strength translates to protectability. A strong mark is distinctive in multiple ways: For one, it is distinctive relative to marks in use by competitors and others serving customer needs that are related to those your company serves. By having a mark that is clearly distinguishable from others, you avoid a sense of relatedness among current and future customers known in legal parlance as “likelihood of confusion,” which can be a basis for an infringement suit or a governmental refusal to deny your mark another aspect of protection – registration. Examples of competitively indistinct marks, i.e., marks that are too similar to avoid a likelihood of confusion – are all too common in records of trademark office decisions refusing registration to the late-comers mark and in infringement litigation.

For example, a strong mark is also distinctive relative to the product or service your company offers, and relative to the customers it serves. It will not have a meaning directly connected to the product or service the company offers or to the customers it services. Common examples of marks that are distinctive in this way include EXXON for petroleum products (because EXXON is a made-up word with no inherent meaning and therefore no direct connection to any product or service), BLUE DIAMOND for almonds, IVORY for soap. Less famous examples include GARANIMAL for children’s clothing and ZU ELEMENTS for paper and leather goods and clothing.

When a mark is strong, the owner is granted greater leeway to assert infringement claims against others based on the use of marks that are different from their strong mark. Thus, the owner of the RED BULL mark for energy drinks was able to block the registration of a PINK COW mark for beer, water, and a variety of other beverages not including sports drinks. “A ‘strong mark . . . casts a long shadow which competitors must avoid.”


2. Register your Company’s Trademarks.

The owner of a registered mark has a number of advantages over the owner of a non-registered mark: First, for a company that is vetting a new mark for distinctiveness and to avoid a likelihood of confusion, one of the first places to search for conflicting marks is the trademark register of the U.S. Patent and Trademark Office. If your mark is present in the register at that point, the mere existence of the registration may motivate the would-be competitor to steer away from a mark that might conflict with yours. This simple, silent benefit may pay off endlessly. Even if a competitor doesn’t search the register before moving forward with a conflicting mark, if they try to register the mark, the trademark office can refuse registration on the grounds that the late-comers mark would cause a likelihood of confusion with your mark already in the register.

Second, a registered mark has certain advantages in court relative to an unregistered mark. These relate to public awareness of the mark and to certain legal issues that will resolve in the owner’s favor by default when the owner of an unregistered mark would have to prove them.

Third, a U.S. registration can be a springboard for additional protection in various other areas. For example, if imported knock-offs are a concern, the U.S. registration can be submitted to the U.S. Customs Service, which will have the authority to block infringing imports. A U.S. registration is also a key factor in blocking knock-offs and other conflicts in online distribution channels and social media platforms such as IACC MarketSafe®, which covers all Alibaba platforms, and the Amazon Brand Registry (for which existing trademark registration is a prerequisite).


3. Be Protective in Licensing and Cobranding

It can be tempting to keep simple relationships simple – especially when a business partner is willing to cooperate in promoting your brand. However, be aware that the law requires that licensing agreements for trademarks include a term that reserves for the trademark owner control over the mark and over the product or service provided under the mark. Without control of that kind, the agreement could be seen as a ‘naked’ license, which can be fatal to future attempts to protect the mark!


4. Be Watchful for Unauthorized Third-Party Uses and Take Action Against Infringers.

Keep track of how the public views your company’s marks apart from your own marketing and advertising. Listen to feedback from customers; set up Google alerts and engage a trademark watch service that can report to you on attempts by others to register potentially conflicting marks in trademark office registers or as a URL or social media channel. When legitimate complaints are posted on public media, address them in a public way – a reasonable response can go a long way toward preserving a brand’s reputation. Finally, take appropriate action against infringers, and be aware that the appropriate action may differ depending on how or where the infringement occurs. A firm ‘Cease and Desist’ demand is normally a good start, and there is almost always a litigation option, but a DCMA takedown letter to a web host, or a social medium dispute resolution procedure, or UDRP, or an International Trade Commission (ITC) Exclusion Order might also be available.


Frederick Spaeth

Image Credit: Piqsels @ Creative Common

This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. The opinions expressed in this article are those of the author only and are not necessarily shared by Dilworth IP, its other attorneys, agents, or staff, or its clients.