5 critical Do’s and Don’ts of trademarks

A trademark identifies your business and links it to your quality, credibility, experience, goodwill, and reputation, etc. It is an essential asset to your business if it is used, protected and enforced in the right way. But if the right steps are not taken, a trademark may bounce back negatively towards your business. It may trap you in legal disputes and result in a hole in your pocket.

In the present day and age, the importance of intellectual property is increasing exponentially and therefore the right steps towards choosing and registering your trademark is an essential action for the future of your business. Registering you trademark is like indicating to everyone that this specific logo, symbol, word, name or design is exclusively used for the goods or services provided by your business. This legal right is especially vital in cases where another business may later infringe on your rights. A few specific aspects must be kept in mind before choosing the right trademark, such as the factors below.

#1 Run a Clearance Search

One of the first steps for any business would be to run a clearance search based on the few trademark options the company has decided upon. The goal of this search is to ensure that the proposed mark will not put you at risk on infringing someone else’s mark. At this point it is essential to know that there are several classes defined by the Trademark Office which designates a specific class to a specific trade. But it is always advisable to perform a more generalized clearance search, rather than concentrating only on the classes that your trade deals with. Submitting a trademark application with no background work will result in a loss of both valuable time and considerable finances in case you are denied the trademark due to prior use.

#2 Be smart in choosing the right trademark

There are several aspects to keep in mind when choosing the right trademark.

• Do not apply for trademarks that are similar to well known trademarks like Philips, Siemens, Godrej, Reliance, and Tata, etc.
• Ensure that descriptive marks are not used, namely marks that merely describe the goods or services, for example: ‘Rose and Petals’ for gardening, ‘Samosas’ for food business, ‘Big Bazar’ for grocery store, etc.
• Avoid using generic names. These are general words that are not unique and not distinctive. Choosing generic trademarks will only make you blend into the crowd, rather than stand out of the crowd.
• Avoid using surnames like ‘Aggarwals’, ‘Shetty’s’, ‘Iyengar’ or ‘Adigas’.
• Make the trademark fanciful. It is always better to make up or invent new words or phrases for a trademark. It gives you the strongest chances of getting approval. For e.g. Patracode for Patents, Trademarks, Copyrights and Designs.
• Use arbitrary marks. Wherein a product is trademarked with an ordinary name which is not directly associated with the product. For example, Shell for petroleum, Amazon for booksellers, and Amul for dairy products, etc.

It is also important to note that there are some exceptions to the above mentioned aspects. In some cases, a surname or a descriptive mark may be granted as a trademark if the mark has gained recognition and goodwill over several years.

#3 Registering your trademark at the earliest is a good idea

Even though it’s not compulsory to register your trademark, registering the trademark provides you stronger rights, as it allows you to take the infringer to court under both common law and civil law. In the case of unregistered trademarks you can only sue the infringer under common law. Also, registering the mark may help you get a preliminary injunction more easily due to the direct establishment of a prima facie case. Further, the registration may also help in administrative procedures with respect to custom authorities in reference to importing of infringing products. In case of search and seizure processes, the police authorities can be involved to identify and take action on the infringers. Hence, protect your intellectually property at the earliest in order to possess legal rights on your trademark.

Once the trademark application has been sent, you may begin using ™, the ‘trademark applied’ for symbol and once the trademark is registered you can then use ®, the ‘registered’ symbol.

#4 Appropriate usage of the trademark for enforceability

The enforceability of the mark is proportional to the use of the mark. If due to certain instances, the mark is not used by the company, the court and/ or trademark authorities may abandon its rights on an option of any interested third party and allow them to adopt and use the mark. So it is the responsibility of the owner to ensure active usage of the trademark. The higher the usage of the mark, the higher the recognition your company achieves. Extensive continued usage and intensive marketing over the trademark results in a strong market presence; for example, marks such as Toshiba, Samsung, Birla, and Tata, etc. have gained extensive recognition over the years.

Here is a small catch! In a few cases, the extensive use of the trademark may convert the mark into generic terms. It is always essential to be careful of how the mark is marketed or used. Ensure that when marketing your product, your trademark is not used as a verb or noun and your trademark doesn’t involve a generic description. Some examples include Xerox for photocopying, Fridge for refrigerators, Escalator for moving stairs, and Thermos for vacuum flasks. All these marks are actually the names of the companies that first introduced these products. Many people relate to these marks as they have become generic terms in most people’s dictionaries.

#5 Keep your future growth and expansion in mind

The business owners must ensure maintenance of the existing marks, and also look into protection of new marks. It is essential to keep a watch on infringers, so a monitoring system could be put in place to ensure that others are not misusing your trademark to their advantage. If the business is introducing new products, it is advisable to continue protecting new trademarks on an ongoing basis. Keep in mind that if a new product of a different trade is being released under an existing trademark, it is always better to perform a trademark clearance search in the new market.

It is vital to keep in mind future expansion plans as well. If there is another business using the trademark you wish to register, but is located miles away in another country, then what would be the right step? Even though it may not be considered as a case of infringement, the immediate answer is not to go forward to register the desired trademark. What if your future plans involve expansion in those specific countries? Therefore, it is always better to keep futuristic thoughts in mind before finalizing on your trademark.

The usage, protection and enforcement of a trademark are essential for any company, be it a startup or a multinational company. Following these few important points will be of great help in the long run. Trademarks are one of the most price possessions of the business and therefore they need to be cultivated and protected in order to gain long term success and recognition.

About the authors:

Gaurav Singhal is the Director and Principal IP Attorney at Patracode Services Pvt Ltd. He is a B. Tech in Computer Science, LLB from IIT-Kharagpur and Masters in Business Laws from National Laws School of India University, Bangalore. Gaurav has been working in the IPR field since many years and has been the Strategic IP Counsel at Siemens India, headed Intellectual Property Department of a Singaporean firm, and is also a practicing Patent Agent at the Indian Patent Office. This post has been co-authored with Ananya Dhuddu who works as an Intellectual Property Analyst at Patracode.