When your brand is online, it is in jeopardy. Competitors may use your brand terms in keyword searches, pirate your slogans or unfairly label their goods with your brand. There are roughly a million ways for the unscrupulous to abuse your brand, and only one way for you to protect it — diligence. Protecting your brand starts with consistency of use and message, and requires a meticulous process to protect your brand value and your legal rights.
Best practices require that you establish your rights before you even go online if you can. I consulted renowned Trademark and IP attorney Maureen Kassner, partner at K&G Law, who offered this advice:
“The most critical steps you can take towards protection of brands and trademarks take place long before they are used. Trademark rights are national in scope. Once you have narrowed a list of potential brand names for your new product or services, the list should be searched for availability as a trademark in any countries in which it is proposed for use on significant scale. US trademark attorneys oversee this process in the States, and many have a network of colleagues who can assist with international trademark clearance. Ideally, the list should list potential names in order of priority so that once a mark appears to be available for use there is no need to undertake additional searches.
The United States, unlike most countries, recognizes trademark rights acquired through use as well as those conferred by registration. For this reason, trademark clearance searches should include not only the federal and state trademark registry for applications and registrations of prior marks but should also include common law (i.e., unregistered) uses, many of which can be found on the internet. Demonstrated use of identical or similar names for related goods or services is a red flag that it will be difficult to create a strong brand identity and garner recognition in the marketplace.”
Once you have settled on an available trademark, it is up to the brand stewards to protect it, bringing in your marketing, corporate and legal resources for that purpose. The legal team will need to secure the rights to the brand. According to Kassner, this would entail:
“… not only filing an application for registration in countries relevant to the business, but also securing relevant domain names and social media handles. In addition, it is important to use the appropriate designation whenever the mark is used to indicate to the public that the term is proprietary. (In the US, “TM” may be used for any mark; the ® symbol can only be used after registration.)
Legal language identifying the rights claimed in a brand should be included in small print either at the end of an ad or at the footer on your proprietary website. Distinctive logos, slogans, favicons, and jingles which are used consistently in connection with the goods or services are great ways of building brand recognition among your target audience and can be registered separately as both trademarks and (with the exception of slogans) copyrights.”
Infusing your owned properties, like your website, with a consistent and appropriate brand presence should start with a brand guidelines document that is shared with all the internal and external partners that represent you online. Have your trademark attorney review that document. Once reviewed and approved, this cements a common understanding about the desired brand presentation.
As the brand evolves, of course, the document will need regular updating. Use those brand guidelines across social media platforms, in emails, and any public communication that represents your brand to ensure the consistency that ultimately helps to support your claims should you need to defend them.
The sad truth is that even with all the appropriate legal precautions and process, infringements routinely occur. Regular monitoring is required to find and minimize the impact of these infringements across channels and platforms.
Search activity is a common point of trademark infringement. Per Google’s rules (simplified) others may bid on your brand or trademarked terms but may not use the trademarked language in their ads. Get familiar with the search engine’s official policies and report bad actors in a timely manner both directly to the search engine and with a letter to the offender.
Schedule a weekly competitor check to see the bidding strategies of those most likely to benefit from your brand. Do regular branded searches both online and in social channels that extend to include your other trademarked items to see who is misusing your property. Include typos and the URL of your brand (www.BRAND.com) in your searches as consumers often type that into a search bar.
Your agency partner can and should provide this service, but there are also trademark monitoring services that can offer a broader package of monitoring and resolution. Be advised that the path to resolution with offenders is often lengthy, frustrating and filled with bureaucracy and forms.
Keep good records of all incidents and correspondence and don’t rely on third parties to reach the conclusion you need — this is a battle won by the diligent.