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July 01, 2022

by Christopher Tackett, Esq., Roetzel & Andress

1. Choose your brand carefully. As in many contexts, the vital first step is exercising some careful forethought—here, regarding choosing your company’s branding. Make sure your intended company name is not one being used by others. You do not want to start building brand equity that will flow to some other rightful owner of the branding name. Avoid using a name for your brand that incorporates overly generic words or phrases, because using generic words will lead to a brand that simply will not be protectible to nearly the same extent. Work with counsel to conduct a trademark search to ensure that your intended brand is not confusingly similar to another company’s. If it is, this may shut down your ability to build brand equity before you ever start.

2. Consult with an IP lawyer and take steps to protect your brand and IP. Work with legal counsel to prepare an application with the U.S. Patent and Trademark Office for registered trademarks on your brand and logos. This step will allow you to use the registered trademark symbol in conjunction with your company’s branding assets. Importantly, the registration will establish a presumption of your ownership of the assets and will put any would-be infringers of your trademarks on notice that they may not use your brand. As a result, registration can significantly improve your company’s position if litigation is needed to address a competitor misusing and harming your brand.

3. Use necessary agreements with your vendors and customers. Agreements should be carefully used as a part of your company’s overall strategy to protect its valuable intellectual property. For example, a company should use Terms and Conditions language in your product-sale invoices that maintain your company’s exclusive rights to use its IP, as well as using narrowly tailored non-disclosure agreements with your vendors that adequately maintain protection for your company’s trademarks, trade secrets and other intellectual property.

4. Diligently monitor your brand and trademarks. Brand protection requires a company to actively monitor its brand, whether manually or through a number of options that can be implemented to automate the process. The internet marketplace, in particular, can be the wild west, and a knock-off company could have already moved on and closed its doors if you wait years to address it wrongly infringing your IP, making money off your brand and likely harming your company’s reputation in the process.

5. Actively address any improper and infringing use of your company’s brand. It is essential to remain protective of your brand to avoid any argument that your company has waived its rights. This is especially true when a competitor is not using your exact branding but are using branding that is confusingly similar to yours—in an effort to ride the coattails of your company’s years of effort to build brand equity. Thus, as soon as you become aware of a competitor using your branding in a questionable way, you should address it with a cease-and-desist letter to put the offender on notice, followed by further legal action if needed.