The United States has federal and state laws that grant intellectual property (IP) protection in the territory.
Your company’s intellectual property, such as trademarks, trade secrets and patents, may be your most valuable asset. In a hyper-competitive market, it is crucial to protect your IP assets and continuously enforce them.
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What is brand protection in the U.S.
Brand protection is about protecting the intellectual property (IP) of brands and companies. IP protection defends against counterfeiters, copyright infringers, patent abusers, or other types of intellectual property infringement, such as design rights, trade dress, and color marks.
Brand protection helps to prevent more than the loss of revenue. It protects reputation and trust.
Why online brand protection
The rise in e-commerce channels: marketplaces, social commerce, live streaming, B2B exchanges – has made IP infringements prevalent globally. Counterfeits are no longer confined to specific geographical locations. Instead, e-commerce channels allow access for anyone, anywhere, anytime.
Online brand protection is crucial to protecting your brand both online and offline.
First step to brand protection
As in other jurisdictions, the first step to brand protection in the US is to register trademarks.
Trademarks are usually brand names and logos used on goods or services. Apply for registration of your name, symbol, logo, slogan, or a combination of these things as a trademark.
If some of the brand’s products have unique, identifiable names, consider registering each one as a separate trademark. In some cases, a unique shape or color can gain trademark protection, such as the shape of Coca-Cola bottles and the canary yellow for Post-it notes.
When applicable, register other intellectual property rights, including copyrights (which protect original artistic or literary work), patents (which protect invention), domain names (which are part of a web address), and generally all your intellectual property assets.
Registered IP rights give you the exclusive right to use them, such as using a logo on your products as well as in your advertising and marketing content.
Trademark registration in the U.S.
When we say “trademark” in the U.S. we can refer to both trademarks and service marks. Trademarks are used for goods, while service marks identify services.
Trademarks are administered by the U.S. Patent and Trademark Office (USPTO). As the USPTO defines it, “a trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services”.
A trademark identifies and distinguishes your goods or services from others, such as the name of a product or service that enables customers to recognize you.
Trademark registration means that you are the only one who can legally use your trademark in the territory.
- Identifies the source of your goods or services.
- Provides legal protection for your brand.
- Helps you guard against counterfeiting and fraud.
Trademarks are protected under the Lanham Act. The United States uses a first-to-use trademark system. This means that the first to use a mark in commerce gains rights in the territory. The priority of the first-to-use party stands even if it did not yet register the mark at the time of use.
Although true, the situation is a little more complex. A trademark application can be filed based on actual use in commerce or a sincere intention to use it. When a trademark application is filed before actual use, the applicant must use the mark in commerce within a specified period of time (see USPTO’s timeline).
Under the Lanham Act, the filing of an application to register a mark is considered constructive use:
“Contingent on the registration of a mark on the principal register provided by this chapter, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such filing—
has used the mark;
has filed an application to register the mark which is pending or has resulted in registration of the mark; or
has filed a foreign application to register the mark on the basis of which he or she has acquired a right of priority, and timely files an application under section 1126(d) of this title to register the mark which is pending or has resulted in registration of the mark.”
Trademark application considerations
The first step in the federal trademark application and registration process is selecting a mark. When choosing a mark, make sure it can be registered and protected.
Before registration, the USPTO examines the trademark application. Often registration is denied due to “likelihood of confusion” between your trademark and an existing one. Therefore, similar and even identical marks can coexist if the goods or services are not related. Yet, marks that are not identical can still confuse consumers.
“Likelihood of confusion” can be due to similarities in:
- Meaning, even if in translation
- Overall commercial impression
- General meaning and consumer reaction
As for protecting your trademark, a strong mark is a mark that is easier to protect and prevent others from using.
The strongest marks are fanciful trademarks and arbitrary trademarks.
Fanciful marks are invented words that have no meaning, such as ROLEX for watches and GOOGLE for online services.
Arbitrary marks are words that are not related to the protected products, such as APPLE for computers and AMAZON for retail services.
The next category is suggestive marks that suggest what the goods are but do not describe them, such as AIRBUS for airplanes. Marks that merely describe the goods or services, called descriptive marks, are harder to protect and often unacceptable.
Sometimes, such marks do gain secondary meaning and are therefore protectable, such as HOLIDAY INN for hotels.
The weakest marks are generic words, that are almost never registrable or enforceable. One rare example is the Supreme Court ruling in booking.com.
The USPTO has the discretion to refuse registration on other grounds, such as if the name is the title of a book, a surname, and more.
Considerations lie beyond the USPTO. For example, whether or not consumers will find it easy to remember or pronounce your brand.
If you wish to offer your goods or services outside the United States now or in the future, also consider what your suggested mark means or sounds in different languages.
Before you apply for a trademark, check that there are no conflicting trademarks.
Once you have ideas for names, you can do a quick search on Google and in the relevant patent office to check if the trademark is available or if there is a likelihood of confusion.
The USPTO offers trademark search via the Trademark Electronic Search System (TESS). This database refers to trademark registrations and applications, but does not reflect unregistered trademark rights known as “common law” rights. To find them, you can search online, such as on websites and business name databases.
A more comprehensive search can prevent future problems and save you time and money. If you choose a name that is already trademarked, you can get a cease-and-desist letter from the trademark owner that will force you to stop using the name.
We recommend having a professional perform a comprehensive search.
Madrid System trademarks
Through the Madrid Protocol, trademark owners can protect their trademark in foreign countries that are party to the treaty. It provides efficient and cost-effective trademark protection in multiple countries under one application or allows the addition of countries after trademark registration.
To utilize it, file for a national trademark registration. This application or registration in your home territory is your “basic mark”. It can be used for filing internationally in Protocol member countries through WIPO, which administers the Madrid System.
For non-US companies, the decision between filing directly with the USPTO or choosing protection through international registration may affect various issues, and it is advised to get professional advice.
- Select a trademark
- Perform a trademark search
- [Mainly for non-American brands: Decide if you want to apply directly with the USPTO or use the Madrid System]
- Prepare application
- Submit application and documents
- The USPTO reviews the application and decides whether you are approved or denied
- Any party who believes it may be damaged by the registration of the mark has 30 days to file an opposition to registration
- USPTO issues registration certificate
Digital brand protection after registration
Registration is the first step, and it should be followed by more proactive action.
Register with online platforms
After registration in the U.S., register your brand names and trademarks with online channels, such as Amazon Brand Registry. If sellers abuse your trademark after registration, you can enforce your trademark rights online and offline.
Purchase domain names
Domains are part of your global presence and are valuable assets. When you purchase domain names that include your intellectual property, you can act against infringing domains and fight domain hijacking and cybersquatting. Also, do not forget social media handles.
Record your rights with CBP
If the rights have been registered in the United States, it is simple to record trademarks and copyrights with the Customs and Border Protection (CBP) via an electronic application.
Once recorded, CBP officers have the authority to stop infringing goods and prevent them from entering the United States.
Detect online brand activity
Every brand and business with an online presence should detect brand activity taking place on websites, marketplaces, and social media. Advanced algorithms like the one used by Wiser Market scan online channels to identify intellectual property infringements. The results are then analyzed by a team of experts that move on to enforcement.
Enforce your IP rights
Even after federal registration, brand owners are the only ones responsible for enforcing their marks. Take steps to enforce your rights to protect your brand and reputation. Wiser Market online brand protection services help you take down IP infringing products and provide you with a complete IP protection suit.
Wiser online brand protection
When it comes to online brand protection, in the U.S. and around the world, Wiser Market offers quick, efficient, and cost-effective solutions that can help brands in all sectors.
We offer a digital brand protection strategy that includes 24/7/365 worldwide brand monitoring. Our innovative system scans online channels, including websites, marketplaces, social commerce networks and other platforms to detect IP infringements and enforce your IP rights.
Our team of experts has extensive knowledge and works closely with you to tailor a unique solution that best serves your needs. Enforcement makes your IP stronger and helps secure your brand and revenue online and offline.
With Wiser Market, your brand will have a comprehensive IP protection solution, from detection to enforcement of your IP rights, allowing you to focus on growing your business.
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WiserTip: When you consider your brand protection strategy, plan ahead based on where you want your brand to go in the future.
What are the advantages of online brand protection?
Online brand protection is a must-have in today’s digital, global economy.
- Protect your IP rights – They are your brand’s assets.
- Reduce production of counterfeit products – Eliminating counterfeit products on online platforms significantly reduces the motivation to produce them.
- Grow your profits – Fewer counterfeiters means more profits to your brand. It is almost impossible to compete with counterfeiters on pricing because they claim to offer “your” products or services at lower prices.
- Increase market share – A counterfeit seller is an unfair competitor for your market share. Dealing with counterfeiters will help you win back your market share.
- Decrease the costs of doing business – Marketing costs rise when illicit sellers bid up paid advertising costs and/or erode legitimate search engine optimization.
- Encourage investment in your brand – Perceived brand value rises when your brand is strong.
- Faster growth – Counterfeits are inhibiting your growth.
- Defend your reputation and customer trust – Counterfeits damage hard-earned brand reputation. Brand dilution is caused by illegitimate use of any of the brand’s distinguishing features by others, resulting in confusion and jeopardizing the brand’s trustworthiness.
What are the benefits of registering a U.S. trademark?
There is no requirement for federal registration of trademarks, and the use of a mark grants “common law” rights.
However, registration provides advantages. It serves as presumption of ownership by the registered IP holder, and enables the holder to seek protection nationwide. It is also the basis to obtain registration outside the U.S.A.
What symbol can be used for a registered trademark in the U.S.A.?
The ® symbol. TM is used for unregistered goods and SM for services.
What is trademark infringement?
According to the USPTO, trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.
Can international companies register trademarks in the U.S.?
Yes, foreign companies can register their trademark in the United States.
Do I have to use a trademark attorney to register a trademark in the US?
If you are foreign-domiciled, you must be represented at the USPTO by an attorney. If, on the other hand, you are domiciled in the United States, an attorney is highly recommended but not required.
What is online brand protection?
Online brand protection services counter online threats and protect your intellectual property assets. Whether you wish to fight counterfeiting, protect your domain name, prevent trademark, copyright and brand infringements or combat gray market selling and knockoffs, use Wiser Market’s online brand protection strategy. Effective online brand protection protects your brand’s revenue, profitability, reputation, customer service and brand trust.
Disclaimer: This information is intended to help the reader gain a basic understanding of the current trademark situation in the USA. It is NOT designed to provide legal, business, or other relevant professional advice.