Business Law & Compliance
Securing trademarks to make them work for your brand
6 min read
22 February 2017
Securing trademarks is the most effective way of maintaining the reputational value of your business, whether you’re a small startup or a huge, world-renowned brand.
Indeed, by securing trademarks, they act as a sign of authenticity, and provide consumers with peace of mind when it comes to purchasing goods and services.
As part of this, trademarks are hugely important for helping to protect brands from acts of infringement. If a competitor starts offering similar goods or services to you, or is operating under a similar name, having a trademark in place puts you in a very strong position if the case is taken to the courts.
Without securing trademarks, the retail landscape would be cluttered and chaotic, with thousands of brands pretending to be the genuine article and consumers perpetually confused.
However, while securing trademarks is vital, it doesn’t mean that they should be pursued and acquired with haste.
By jumping straight in without carrying out the required research and due diligence, you could well find yourself embroiled in ultimately damaging and costly disputes.
Keeping up with trademarks
As new businesses and startups continue to emerge from all corners of the globe, the volume of trademark applications has increased significantly.
This not only puts pressure on the authorities to make important decisions with shrinking turnaround times, but it also forces businesses to get securing trademarks as swiftly as possible before they’re snapped up by rivals.
This has created a culture of reckless trademarking, where the consequences of the actions are simply an afterthought to businesses.
On the other side of the fence, trademark practitioners are challenged to keep up with the needs of their clients while still trying to provide the highest level of accuracy and quality results required.
The consequences of reckless trademarking can be an expensive proposition . If a similarly-named, trademark-protected business tries to take your brand to court, the legal fees – combined with the cost of potentially losing the case and of re-marketing – could force a business to fold completely
A recent example of this is the case between UK online fashion retailer ASOS and two European rival retailers ASSOS and Anson’s. Following ASOS’ attempts to gain ground in the wider European market, ASSOS and Anson’s (who both had existing trademarks) accused it of causing marketplace confusion by operating under a similar name.
Because of ASOS not conducting proper research prior to its actions, it was forced to pay out over £20m to both companies – a figure that equated to six months’ worth of revenue at the time of the decision.
How to ensure effective trademarking
Taking all of this into account, there are two things that any business on a mission of securing trademarks must do.
Firstly, it should carry out comprehensive checks before filing an application to identify any existing trademarks that could prove problematic in the approval process.
Secondly, once the trademark is secured, they need to constantly police the landscape for any emerging marks that could threaten their reputation.
As previously mentioned, this is easier said than done in such a fast-moving world. But there are emerging technological solutions designed to simplify the clearance process and put the power of search firmly in the control of legal professionals – technology that can allow informed counsel to be delivered on new brands faster and more efficiently.
There are numerous benefits that come with integrating these technology solutions into your trademark acquisition process.
First off, the clearance search itself can be carried out far more quickly.
A comprehensive clearance search involves so much more than just carrying out a few search engine queries to identify any potential targets; it requires going through huge archives of information and data.
These tech solutions can conduct searches across key content areas simultaneously, such as social media, domain names, common law sources and global PTOs, and flagging any troublesome findings, making it the most thorough solution by far.
Importantly, allowing technology to carry out clearance searches reduces the workload of employees. Consequently, this means that businesses can continue to operate at optimum efficiency while going through the trademark process.
Whether the need is for a full availability search for a major brand, or for secondary and seasonal brands and slogans, technology can provide the flexibility, speed and affordability for all businesses securing trademarks effectively and without any unexpected pitfalls.
While businesses still fall prey to the traps of reckless trademarking, those who embrace change and position themselves at the forefront of innovation and technology will be the ones that really make a mark in this competitive industry.