How To Develop (And Keep!) An Effective Trademark

BEVERLY A. BERNEMAN

Partner


How To Develop (And Keep!) An Effective Trademark

The marketplace can be a relentless barrage of trademarks such as brand names, logos and taglines. How can a business distinguish itself in the melee? A well-developed trademark can give a business a competitive advantage. Businesses that develop their trademarks, register them and protect them can distinguish themselves in the marketplace, attract customers and build brand loyalty. The key, of course, is how to go about choosing and developing an effective trademark.

Here are some things to keep in mind:

  • Create a Strong Trademark. Trademarks can be analyzed on a spectrum of protectability. At one end of the spectrum are the strong marks. These marks are fanciful, arbitrary, invented or suggestive. For instance, Xerox is a made up word. It has such as strong brand identity that Xerox Corp. zealously protects against using the word as a substitute for the verb “copy”. Another example of a strong mark is “Apple” for a technology company. Here, the mark consists of a noun that has no real association with the products. At the other end are descriptive and generic marks. Descriptive marks merely describe an attribute of the product or service. Generic marks are the common name for the product or service. Descriptive and generic marks are weak by their very nature and thus should be avoided.
  • Make Sure No One Else is Using the Trademark. Using a mark that is already registered or used by a third party creates two major problems. The first is that third party use may diminish the value of a mark. Second, and more importantly, someone who is already using the mark has a basis to demand that the business cease using the mark and rebrand. Rebranding can be a costly and time consuming enterprise. Better to be safe by conducting due diligence at this early stage.
  • Register the Trademark. Registration establishes rights related to a specific class of goods or services. This relates directly to building a strong brand. Further, registration bolsters the value of the trademark and thus the value of the business.
  • Monitor the Trademark. In order to maintain rights in the trademark, the business has to use it and make sure no one else is using it. Each unauthorized, competing use diminishes the value of the trademark.

These simple steps can help build a strong trademark that establishes a business’ position in the marketplace.

To discuss how these issues apply to your company contact: Beverly A. Berneman (312)696-1221, baberneman@golanchristie.com