Simply establishing trademark (or service mark) rights through use and registering that mark is not the end of the story. Of course, registering a mark is the most important step that can be taken to protect a mark. But certain additional steps can be taken to further enhance or strengthen protection of a brand. The following are possible additional steps to consider in order to increase protection and exclusivity around a given mark in the United States.
Register Domain Name(s)
If not already done, consider registering domain names based upon or incorporating a mark to reduce the chances of cybersquatting. Consider also registering domains with variations on your brand and mark, such as:
- Typographical errors and misspellings
- Phonetic equivalents and alternate spellings (such as British vs. American English)
- Abbreviations and acronyms
- Transliterations or translations into other languages
- Added or modified punctuation (such as dashes)
- Added or synonymously substituted generic, descriptive, or disparaging terms (such as geographic, corporate, or good/service terms)
- Alternate top-level domains (TLDs) that may have meaning in connection with your mark, such as country-code TLDs (ccTLDs) or generic TLDs (gTLDs) with letters that make up part of your mark or that have generic, descriptive, or disparaging meaning when used in connection with your mark
Additionally, registered trademarks can optionally be recorded in the Trademark Clearinghouse. This provides benefits that can complement defensive registration of alternate domains. For instance, the trademark holder is notified of any new gTLD domain name registrations matching the recorded trademark.
Secure Social Media Handle(s) and Account/User Name(s)
If not already done, consider locking up social media handles and accounts based upon or incorporating the mark—and maybe also variations on that brand similar to those noted above for domain names.
Record Registration with Customs
Consider recording a trademark registration with U.S. Customs and Border Protection (CBP). Such a recordation allows CBP to help block importation of counterfeit and infringing goods into the USA. However, CBP recordation requires having a valid registration on the Principal Register and further requires periodic renewal of the recordation. It is also possible to provide product identification (Product ID) guides, product test kits/tools, and other online or in-person training to CBP to aid in the identification of suspect goods by customs field agents at ports of entry. CBP recordation to block importation is a significant exception to the general rule that trademark owners have to police infringement themselves.
Record Registration with Online Marketplace Platforms
Certain online marketplaces allow trademark registrations to be recorded in their own private brand registries, such as Amazon.com’s Amazon Brand Registry and Wal-Mart’s Walmart Brand Portal. The policies and procedures for such registries vary by platform. They typically require having a granted registration on the Principal Register. Generally speaking, recording in such private registries can assist in blocking the appearance of counterfeit and infringing goods (sometimes automatically) and can also help reduce the risk that your own brand and associated goods will be blocked by the platform.
Proactively Monitor the Commercial Market
Proactively monitor both online and offline markets for potentially problematic activities by others that implicate your mark. Aside from CBP recordation (see above), the U.S. government will not monitor private trademark rights, which is left to the mark holder. Monitoring can involve visiting stores, reviewing advertising media and publications, following competitor activities, and periodic online and/or trademark database searches.
For example, monitoring allows for:
- Enforcement actions, including infringement lawsuits and demand or cease & desist letters
- Oppositions, cancellations, and other challenges to TM registrations and applications by others
- Domain name cybersquatting actions in court or through mandatory arbitration (UDRP, URS)
- Takedown requests to online platforms (availability and procedures vary by platform)
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.