Benjamin Franklin once famously said, “An ounce of prevention is worth a pound of cure.” He was of course talking about fighting fires in Philadelphia and not trademark strategy but the advice behind the sentiment holds true. Stratford’s resident trademark expert, Kim Capiau talks about why your IP strategy shouldn’t end once you’ve registered your trademark.
I’m a big believer in the value of proactive IP management and strategy, especially when it comes to trademarks. Their longevity makes them uniquely valuable in the world of IP which is why I’m a big advocate for trademark monitoring.
When talking to potential clients about their trademark strategy and the importance of proactive maintenance, I always like to start with a seemingly innocuous question, “What do Band-Aids, Aspirin and 3M have in common?”
If you don’t know where I’m going with this question, you might think that these are all things related to the healthcare industry, and while you wouldn’t be wrong, that is not the only thing these three brands have in common.
All three of these things have been the subject of trademark issues. Their connection may not have been immediately apparent because of the different outcomes but serves to highlight the importance of intentional trademark protection in protecting your brand.
It’s a Journey, not a Destination
Before we go into the details of each of the above-mentioned cases, let’s first talk about the benefits of comprehensive trademark strategy.
As we’ve mentioned before, trademarks and logos can be thought of as the ambassadors of your brand. Ensuring that they are properly protected will go a long way in increasing your brand value.
The essence of trademark protection is to solidify brand recognition and to reduce the potential for confusion among consumers which results in goodwill and increased market share for you. A proper strategy will account for protection before, during and after you have registered your mark.
Before investing in the launch of your brand/product or designing and filing for trademark registration, we recommend trademark searches; after filing you can protect your investment with extensive trademark monitoring. Rebrands are extremely expensive so care should be taken before and after to safeguard your IP rights.
Eyes on the Prize
Okay, you’ve created your brand identity and obtained a trademark registration; you now have the right to enforce your trademark rights efficiently against would-be infringers and to set yourself apart as a recognizable brand in the industry you operate in. How do you go about doing that?
The best way to protect your trademark and investment in your brand is to create a plan to identify infringement and misuse promptly and take prompt action before any lasting damage can occur.
Moreover, if you do not police the use of your mark in the marketplace and enforce your trademark registration, trademark rights will narrow over time to the point where they can become impossible to enforce.
Benefits of trademark monitoring
1. Avoid damages
When you fail to identify and act against an infringer, you may lose a lot of revenue if a competitor is confusing your customers into giving them market share by using a similar name.
3M is an example of what can happen with proper trademark monitoring in place. The company recently launched a lawsuit against a Chinese company for the use of ‘3N’ which resulted in a win for 3M and “significant damages” of 3 million dollars as it was determined that 3N is confusingly similar and the company had managed to acquire clients and market share through using it.
2. Avoid excessive (litigation) time and costs for enforcement
The more people you allow (by not acting against them) to use your trademark, the more difficult, time-consuming, and expensive it will be to effectively enforce your trademark.
Another benefit of implementing a trademark monitoring strategy is the ability to monitor for filed applications of similar trademarks by your competitors. It is good practice to do this with the trademark offices in any/all of your jurisdictions of interest. Keeping a close watch may also allow you to timely oppose the trademark application with the trademark office. Once the opposition window has passed, you may need to resort to a more expensive litigation procedure.
3. Avoid the worst-case scenario; losing your trademark because of genericide
Both Band-Aid and Aspirin were cases where the brand power has almost completely eroded, and the trademarks have become generic terms such that people are using the brand name interchangeably with the actual product name.
How often do you use acetylsalicylic acid (or ASA) instead of “aspirin” or bandage in place of “band-aid”. Both were once registered trademarks but have been lost because of genericide.
How should you monitor your trademark?
While a quick occasional internet search for your trademark is a good first step, it is usually not sufficient for long-term brand protection and will likely only yield results of the “low-hanging fruit”.
- Trademark searches should be done regularly (we recommend at least every 3 months).
- Search for identical but also similar trademarks that have the potential to confuse customers and clients.
- Check on websites where your competitors may be active and in the databases of trademark offices in jurisdictions where you have filed or registered your marks.
- Focus on searching for similar marks that are used in a manner that would be able to confuse your potential customers. For example, if another company is using a similar trademark for cleaning products while you are using yours for quantum computing, this would pose less of a problem and may not constitute trademark infringement.
- Act immediately if any potential infringement or misuse is discovered.
You can solicit the help of trademark experts with access to professional trademark search engines. It would also be prudent to have an expert review any licensing agreements you have in place to ensure that licensees are using your trademarks correctly and not contributing to brand dilution by not adhering either to product quality or usage standards (incorrect font, colours etc.).
It is important to emphasize that trademark registration in and of itself is not a comprehensive strategy. Registration should be looked at as tool in your brand protection arsenal but one that still requires some active participation from you to avoid trademark dilution which comes with damages, including the reduction of your brand value.
About Kim: A registered trademark agent in Canada, Kim is an IP specialist with a unique combination of skills, education, and assets with a drive for success and a passion for intellectual property (IP). Working with growing organizations for many years she’s honed her ability to be both creative and strategic with IP solutions and strategy implementation plans.
She specializes in IP analytics and trademark strategy and prosecution. Before becoming an IP specialist at Stratford, she practised law in Belgium for five years. Kim holds an LLB and LLM in law from Belgium and completed trademark courses organized by IPIC at McGill University.
In 2022, Kim and the entire team at Stratford Intellectual Property were featured on the IAM Patent 1000, an international list of the top IP agencies.
