Think of all you’ve invested in building your brand. You’ve carefully crafted a brand identity that appeals to customers and sets you apart from competitors. You have poured money and time into delivering superlative products or services that cement your reputation for quality. You have also probably thought long and hard about selecting the brand name, domain name, and logo that will make the best first impression and represent your goods and services well.
With so many resources and so much of yourself invested in your brand’s intellectual property, it makes sense to preserve that invaluable identity with the strongest protection possible, and that’s exactly what a trademark can provide. Cultivating a brand from the ground up without securing trademark protection is like leaving a Rolls Royce on skid row with the doors unlocked and the keys and title sitting on the hood. Your brand’s identity is too precious to risk. Trademarking can safeguard your brand and protect the financial future of your business by ensuring you have legal recourse if someone else starts infringing on your marks.
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Understanding the Purpose of Trademarking
To understand what a trademark can do for brand identity, you first must understand what a trademark is and why it exists. According to the United States Patent and Trademark Office (USPTO), a trademark is a word, phrase, or symbol that “identifies and distinguishes the source of the goods of one party from those of others.” A trademark can be your business name, logo, slogan, or a combination thereof.
The purpose of a trademark is twofold: It makes customers’ shopping and purchasing decisions simpler and less costly by identifying goods from sources they liked or disliked in the past, and trademarks ensure that the bona fide producer of the goods (and not an impostor) will reap the financial benefits that flow from a desirable service or product. In this way, trademarking encourages the manufacturing of quality products.
Applying these principles to small businesses — trademark registration protects the mark that customers will look for to identify your products and services, even at a local level. Assuming they have heard of or have had positive experiences with your company, the presence of your distinct mark will drive sales. Likewise, trademarking will prevent competitors from riding on the coattails of your brand reputation by selling inferior products under your mark.
Ensuring Your Brand Identity is Your Own
One of the best ways to protect your brand identity is by ensuring that it is, indeed, yours. In accordance with common law (and under the Lanham Act), a business can establish rights to a trademark by becoming the first to use it in commerce. Merely using a mark in commerce without federal trademark registration, however, limits the protections afforded to you. A trademark case decided last year, DuClaw Brewery v. Ska Brewing Co., best illustrates this point.
A small brewery in Colorado, Ska Brewing, started making Euphoria pale ale in 2005. In Maryland four years later, DuClaw Brewery, producer of Euforia Toffee Nut Brown Ale, obtained a trademark for “Euphoria” beer. DuClaw also secured trademark rights to “Euforia” in 2012. DuClaw then sent an infringement letter to Ska saying that DuClaw was the rightful owner of the mark.
Ska responded with a petition to the USPTO to cancel DuClaw’s “Euphoria” and “Euforia” marks. Ska claimed rights to the “Euphoria” mark at common law since it had used the trademark continuously in commerce in connection with beer and ale since 2005. After a complicated and expensive showdown in court between the two breweries, the USPTO canceled DuClaw’s trademark, giving Ska rightful ownership of the “Euphoria” mark.
In several ways, the DuClaw decision is a cautionary tale to business owners trying to protect their brands. For one, Ska could have spared itself the expense and disruption of a lawsuit if it had only registered its trademark. On the other hand, DuClaw’s mistake was in not conducting a thorough trademark search before registering its brand. Had it included common law trademarks in its search, DuClaw would have known that its brand name was already taken.
It’s also worth noting that the common trademark battles in the beer industry now play out on social media, and generally end up hurting everyone involved.
Read more on trademark issues in the beer industry
Preventing Trademark Dilution
Another benefit of federal trademark registration is the ability to defend your brand identity against dilution, regardless of geography. By contrast, common law trademark rights typically won’t allow you to sue a company using or diluting your mark in a different geographic market. Consider the case of Moseley v. V Secret Catalogue, which went before the Supreme Court in 2003 but wasn’t resolved until 2010.
In this case, Victoria’s Secret sued Victor Moseley, the proprietor of Victor’s Secret, a small sex shop in Kentucky. Victoria’s Secret accused Moseley of trademark dilution — the company asserted that Moseley’s store created an unsavory association with their brand and diminished the brand’s distinctiveness. The 6th Circuit accepted Victoria’s Secret’s argument of “dilution by tarnishment” without requiring the company to show actual harm. The court then issued an injunction prohibiting Moseley from doing business as “Victor’s Secret.”
Victoria’s Secret possibly wouldn’t have had a remedy in this case without federal trademark protection. Because of the brand’s federally registered mark, the company could enforce its rights irrespective of the infringer’s geographic location. By doing so, Victoria’s Secret saved its brand identity from being tarnished by a disreputable imitator.
Brand Protection at Minimal Cost
When it comes to protecting your brand and the financial security of your business, a little bit of prevention can go a long way. Consider the case study of Everyman Espresso, a small NYC coffee shop owned by Sam Penix. Penix has “I [coffee cup] NY” tattooed on his knuckles, and he decided, without performing a trademark search, to use that image to represent his brand.
Shortly thereafter, he received a cease-and-desist letter from the state of New York asserting its “I [heart] NY” trademark rights. While Penix didn’t believe his mark infringed on the state’s, he stopped using the logo. Unfortunately, the state didn’t drop the issue — it went on to demand the financial records of the coffee shop so it could determine the amount of damages to request.
Paying damages and legal fees will likely cost Penix thousands of dollars, and the ordeal essentially invalidates his brand. All of this could have been avoided had he simply performed a basic trademark clearance search prior to using the mark.
Read more in our trademark case study review of this issue in our article NY vs. Coffee Shop
Small business owners and entrepreneurs pour their hearts and souls into their companies. But you can still do more for your brand by securing trademark protection. Trademarking your name and/or logo will help customers recognize you, prevent imitators from exploiting your brand, and afford legal protections not available under common law if you run into issues with trademark infringement.