When thinking about protection for your company’s trademark portfolio, it is important to evaluate more than just your house mark. While a registration for the standard character mark will certainly protect the company’s greatest trademark asset and its use of that mark in any color, font, or size, there may be other intellectual property assets that are valuable and important to protect.
By way of example, let’s take a closer look at a universally known shoe brand – NIKE. Did you know that Nike, Inc. has 253 registered trademarks at the U.S. Patent and Trademark Office alone? These trademark registrations include not just standard character marks such as NIKE, AIR JORDAN, and DRI-FIT, but also logos, slogans, and even trade dress filings. These registrations cover shoes and other types of clothing, but also related goods such as bags, sports equipment, water bottles, and more. There are even registrations for ancillary services such as retail store and entertainment services. But remember – these 253 registrations only protect Nike, Inc.’s trademarks in the United States. Nike, Inc. has trademark registrations in many other countries throughout the world to protect its brand.
So, what can you and your company do to make sure that your most important assets are protected? Here are some considerations for expanding your trademark portfolio beyond your main “house mark.”
Logo Marks
Is the company using or planning to use any original logos or logo+word marks? (Think of the Nike “swoosh” or the swoosh plus the word NIKE.)
Slogans
Is the company using or planning to use any slogans that may signal the source of your goods or services to consumers? (Think of Nike’s “Just Do It.”)
Trade Dress
Does the company have any unique trade dress to consider? (Think of the distinctive design of an Air Jordan shoe.)
Trade dress may include the design of a product such as the shape or configuration, the packaging in which the product is sold, the color of a product or the packaging in which it is sold, or the flavor of the product.
Additional Goods and Services
Has your company expanded its initial offerings or is it planning to do so? (Think of Nike’s expansion from shoes into accessories and even entertainment services.)
International Filings
Are you manufacturing or planning to manufacture abroad? Are you selling or planning to sell your goods or services to clients outside of the U.S.? If so, you should discuss your plans with a trademark lawyer as soon as possible. In many foreign jurisdictions, your trademark rights do not begin when you first use the mark as it does in the United States. China is an example of a “first-to-file” country where trademark rights begin when a trademark application is filed, not when it is used.
If you have not filed a trademark application in such a jurisdiction and your trademark becomes well known here in the U.S., it is common to see squatters file foreign applications for your mark for your goods and services. At that point, it will become very costly and even impossible to get your trademark back, and you would be considered an infringer for manufacturing or offering your products for sale in that foreign country.
These are just some considerations for building your trademark portfolio. Heilbut LLP is happy to provide further guidance and a holistic approach regarding what should be most important to your business, taking into consideration your budget and goals.
