Countdown to Launch . . . Is Your Trademark Ready, Set, Go?

Perfecting the Pitch—Solve Big Problems with Unique Solutions

Countdown to Launch . . . Is Your Trademark Ready, Set, Go?

Startups have a long to-do list, and it can be tempting to put off tackling important work around branding until just before launch. Don’t push the pause button on branding considerations. Strategizing around branding in the early days of your business pays dividends.

Your branding goal is to identify and build a strong trademark. A strong trademark serves two primary functions: it sets your product and services apart from the crowd, and it gives you the opportunity to develop exclusive rights in the mark.

The strongest trademarks are arbitrary or fanciful, meaning that the consumer cannot discern from the mark itself what goods or services are offered in connection with the mark. KODAK is a famous example of a fanciful or “coined” mark; APPLE is an arbitrary mark for smartphones.

For many business owners, it seems intuitive to adopt a mark that does tell consumers something about their business—after all, the logic goes, every time the business uses the descriptive mark it is advertising the goods and services it offers. But this logic is flawed. You won’t stand out from the crowd with a mark that is merely descriptive because others will also be using the same mark. In fact, federal trademark law prohibits companies from registering a mark that is merely descriptive of the goods and services sold under the mark, absent long-standing use in the marketplace that creates an association between the mark and its source.

Implement an effective branding strategy from the get-go:

Brainstorm to identify potential trademarks.

Develop a list of 3-5 potential marks.

Be creative—coin a new term entirely if you can and use that as your trademark.

Avoid common naming pitfalls—such as choosing trendy names, buzz words or terms that others in the industry are already using.

Clear your trademark. “Clearing a mark” refers to researching to ensure that others have not registered and are not using the same or similar mark for the same or related goods and services.

Search both the internet as well as the United States Patent and Trademark Office’s on-line database for others using the same or similar mark for the same or related goods and services.

If you do not locate any obvious roadblocks, your brand counsel should formally clear your top choice mark. This process involves an analysis of risk associated with launching your brand.

Register your trademark. File a trademark application in jurisdictions where you will be doing business.

In the U.S., you can file a trademark application even if you have not yet started using the mark as long as you have an intent to use the mark.

The laws in other jurisdictions vary. Your brand counsel can advise on the potential benefits of filing applications in key markets and potential downfalls from delaying.

Secure social media tags and domain names. Secure social media handles and register your domain name.

The .COM era gave way to hundreds of additional options for generic domain name extensions (gTLDs), including many industry-specific options, such as .health, .finance, .security and .ski, to name only a few. Consider registering your mark with the gTLDs that are most relevant to your business. The investment upfront is relatively small and ensures that you have carved out some space around your mark.

Protect your trademark. After investing in creating a memorable mark, work with brand counsel to protect it by taking appropriate action against others using or attempting to register your mark.

Too often, companies develop impressive websites and logos around marks that they failed to clear. Launching without clearing your mark can set you up for a costly setback in the form of a lawsuit from a competitor with a similar mark.

Work with your brand counsel make sure your mark is Ready, Set, Go! not Ready, Set, No!