If You Snooze, You Lose: The Little-Known Aspects of Protecting Your Trademark

02/14/2017 10:18 pm ET Updated Feb 16, 2017

Last week a story appeared on “The Fashion Law” blog about a trademark issue between Adidas and Tesla. It piqued my interest because it’s always interesting to learn how the dust settles when the big players are involved—and because it involves an issue that most business owners don’t pay attention to. That is, you need to proactively take certain steps to continue your trademark protection, even after you register.

That’s what Adidas did in this situation. Tesla filed with the US Patent and Trademark Office (USPTO) to register its Model 3, three-bar logo as a trademark. If the registration had been for the purpose of using the mark on a car, there would not have been a problem. BUT, Tesla registered to use its three-bar logo on clothing. Adidas, a company known for rigorous policing of its brand identity, challenged Tesla’s right to register the mark. Tesla withdrew its application. Adidas protected its three-bar brand identity.

This illustrates an important point about trademarks—if you want to preserve your brand identity, there are certain steps you need to take. As you know (or you wouldn’t be here), the first step is to register your mark. This is where the rubber hits the road, so to speak. It is common for people to think that once they receive their certificate of registration from the USPTO, their trademark is protected and it’s clear sailing ahead and nothing further need be done.

Sorry, Charlie![1] Not so.

Preserving brand identity—one of your most valuable business assets—requires action. It isn’t difficult, but you DO need to act to protect your trademark.

The specific steps required often depend on your unique set of circumstances, but there are some steps that everyone needs to take to continue the trademark protection that you have already invested in.

First, once you receive your certificate of registration for the USPTO, change the “tm” symbol to an ® on all of your media and marketing collateral. The (R) is the designation that indicates your trademark is federally registered and entitled to certain legal protections. Although this is a more obvious step, many people don’t take it. Don’t be one of them. Be proactive.

Second, you must use your trademark. That’s right. Use the mark in the way you registered it. When you register, you will typically register a word mark (like “Starbucks”) or a design mark (like the Nike “swoosh”). And, you will register for use with a specific category of goods. To protect your mark, the law requires that you use the mark in the way you registered and on the goods for which you registered.

You are required to file an “Affidavit of Use” with the USPTO at specific intervals (between fifth and sixth year following registration and before the end of the ten-year period after registration) to establish that you have continued to use your trademark in the way you have registered it.

In the Adidas-Tesla kafuffle, for example, Adidas had registered and used its three-bar logo on clothing. Because of that, they were entitled to protection. So, when Tesla used three bars on a car, that was not an issue, but when they registered to those same bars on clothing, Adidas sat up straight and said, “I don’t think so.”

Last, but definitely not least (and this is how Adidas knew about the Tesla registration), you must monitor your trademark. If your trademark has value, and I assume it does or you wouldn’t have gone to the time and expense of registering it in the first place, you want to protect it by policing “unauthorized use” by others. It is your responsibility to monitor unauthorized use of your trademark to avoid possible loss of protection down the line--or at a minimum, tons of legal fees and time spent on negotiating and litigating.

There are several ways to police your trademark. You can hire a professional organization that will monitor and police trademark infringement. They monitor filings for similar trademarks and run searches in the USPTO database, they search online for products and scour press releases, and advise you of any possible infringement.

If hiring a professional organization is out of your budget, train your employees to be on the lookout for any possible infringements. And, schedule a time each week to conduct your own searches in at least two places: the USPTO database and the web. Search for anything that could be confusingly similar to your mark.

These three steps are important to protecting your trademark. Of course, if you encounter someone using or registering a similar mark you will have to take action, as Adidas did, and file a challenge to any USPTO registration. If someone is simply using a similar mark, you will have your lawyer initiate the process with a cease and desist letter.

A little active investment on your part will help to protect your valuable brand identity. Three steps to remember:

(1) shout it from the rooftops (use the ®);

(2) use it or lose it (use as registered and file as required with the USPTO), and

(3) if you snooze, you lose (monitor and take action on unauthorized use).

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Solid legal talent is one of the best investments you can make in your business. Susan Burns is your on-call business partner, working with small businesses in growth mode. After many years of watching small business owners make expensive legal mistakes, she couldn’t stand another minute of it. She founded Small Business Legal School to help you build a strong and successful business.

Follow Small Business Legal School on Twitter for more great legal tips: https://twitter.com/LegallySavvySBO

[1] SORRY CHARLIE is a registered trademark of Starkist Co.

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