In this special three-part series, we’ll be highlighting legal issues and bottom-line challenges that impacted consumer-facing products — including dietary supplements, food and cosmetics — in 2023. This series will provide key takeaways and strategies to help you get ahead of potential problems in the coming year.

Establishing a trademark strategy

2024 is the year to get proactive about your trademarks. A strong, carefully executed trademark strategy can benefit every company's bottom line, especially when implemented at an early stage, and it helps avoid protracted problems down the road. Regardless of whether a business aims for national or international trademark protection, it is always essential to have a plan. What is the company going to register and in which countries? And how will the business prevent infringement and handle it if it occurs? A thoughtful trademark strategy answers these questions while helping a company develop and maintain a robust trademark portfolio.

Prioritizing marks

The first step in developing a trademark strategy is identifying and prioritizing the most valuable marks.  Not all marks are created equal, and companies should allocate resources proportionally. This involves reviewing existing trademarks, as well as future marks and marketing initiatives. A trademark plan should account for new products in the R&D pipeline and geographic markets of interest. Once key marks, products and geographies have been identified, it is essential to assess appropriate clearance and registration activities.

Searching and clearing proposed names

It is good practice to conduct a search before adopting any new mark. This is important because the new trademark cannot be used or registered if someone already owns an identical or similar trademark in the same (or similar) class of products or services. Many types of searches are available, and the cost varies based on their scope and thoroughness. When determining how much to spend on a trademark search, weigh the cost against the risks of not searching. Spending money upfront on a comprehensive search may help prevent wasting tens of thousands of dollars (or more) on having to change an entire brand strategy because another company already uses the trademark and has priority in the marketplace.

Once a mark is cleared, apply for registration in all commercially significant countries. Registration provides many important benefits, particularly in countries that employ a “first-to-file” system of trademark rights. In first-to-file countries, ownership of a mark is conferred on the party who first applies to register the mark, regardless of whether they use the mark.    

Diligence is key

Registration is only the first step in the life cycle of a strong mark. Like any property, trademarks require diligent maintenance to ensure they serve a business for years to come. Here are some best practices to consider:

Policing and enforcing trademarks

Popular trademarks will always be at risk of being copied. Let’s say a company has invested the time, money and resources into developing and registering its trademarks. It is now critical to employ a robust policing and enforcement plan to protect them. Although the idea may seem daunting, the core of a trademark enforcement plan boils down to three simple steps: (1) set enforcement parameters; (2) monitor the market; and (3) take action.

First, a company should work with its attorney to develop the parameters for a policing and enforcement plan. This ensures that a firm can quickly identify problems, take preventive measures and fully understand its rights related to the registered trademark.

Next, it is important for a company to monitor its trademarks so that it can act quickly if copycats try to use or register the mark (or a similar mark) in the U.S. or abroad. Businesses should learn about the types of watch services available and select the one that suits their needs and budget.

Finally, swift action is vital to protecting trademarks when a watch service identifies a threat. This typically involves sending a cease-and-desist letter but may involve other tactics, such as a letter of protest, opposition proceeding or federal litigation. A company’s attorney can help decide what options are available and which is best suited for the situation.

ATW takeaways

Developing and implementing a trademark strategy should be essential to a brand’s management plan for 2024. More importantly, a company must protect its investment by maintaining and policing its marks. A company should work with counsel to set up a maintenance schedule and a step-by-step plan that allows it to address infringement rapidly and effectively.

Next up

In part two of this series, we’ll tackle another important way to protect your business: implementing an effective patent strategy.