After more than 25 years practicing trademark law and working with businesses of all sizes from around the world, I have noticed some clear patterns.
Our firm has helped clients secure more than 5,000 trademark registrations. Across all of those businesses, industries, and brands, the clients who do the best job protecting their trademarks tend to share a handful of habits.
They do not treat trademark protection as a one-time filing. They make it part of how they launch, grow, and manage their brands.
What do successful businesses do to protect their trademarks?
The most successful trademark owners tend to:
- File trademark applications early
- Protect important names, logos, slogans, and other brand assets
- Stay on top of trademark renewal deadlines
- Monitor for possible infringement and address concerns promptly
- Work with experienced trademark counsel
Here is why each of these habits matters.
1. They File Trademark Applications Early
Successful businesses do not wait until a brand becomes extremely valuable before thinking about trademark protection.
When they have a new business name, product name, service name, or other important brand, they begin evaluating trademark protection early.
That usually means conducting a trademark search before making a major investment in the name and, when appropriate, filing a federal trademark application promptly.
In many situations, a business can even file a trademark application before launching the brand, based on a bona fide intent to use the trademark in commerce.
Starting early can help a business:
- Identify possible conflicts before investing heavily in a brand
- Begin the USPTO application process sooner
- Avoid having trademark protection become an afterthought after a launch
- Make branding decisions with more information about potential trademark risks
Early does not mean filing blindly. A thoughtful trademark search and filing strategy should come first.
2. They Protect More Than Just Their Business Name
A brand is often much more than one name.
Successful businesses look at all of the elements customers use to recognize them.
Those elements may include:
Business and product names. Names are often among a company’s most valuable trademark assets.
Logos. A distinctive logo may deserve separate trademark protection, particularly when it is an important part of how consumers recognize the brand.
Slogans and taglines. A slogan that functions as a source identifier may also be protectable as a trademark.
Nontraditional trademarks. In some situations, colors, sounds, shapes, packaging, motion, and other distinctive features can function as trademarks.
The USPTO recognizes that trademarks can include words, slogans, designs, sounds, colors, scents, and other indicators that identify the source of goods or services.
That does not mean every brand element needs its own trademark application. Successful businesses identify the brand assets that matter most and develop a strategy for protecting them.
3. They Stay on Top of Trademark Renewal and Maintenance Deadlines
Getting a trademark registration is not the end of the process.
A federal trademark registration can potentially remain in force indefinitely if the trademark continues to be used and the required maintenance filings are made on time.
For most U.S. trademark registrations, important maintenance filings are due:
Between the fifth and sixth years after registration
A required declaration concerning continued use or excusable nonuse generally must be filed.
Between the ninth and tenth years after registration
Additional maintenance and renewal filings generally must be submitted.
Every 10 years after that
The registration must continue to be properly maintained and renewed.
Madrid Protocol registrations have different maintenance requirements.
Successful trademark owners docket these deadlines well in advance. They also make sure that ownership information, specimens showing use, and the goods or services covered by the registration remain accurate.
Missing a required deadline can result in cancellation or expiration of a registration. Even when a business can later file a new application, it may lose the history and benefits associated with the earlier registration.
That history can be extremely valuable.
4. They Monitor Their Trademarks and Address Possible Infringement Promptly
Successful businesses do not assume that receiving a trademark registration means no one else will ever adopt a similar name.
They keep an eye on the marketplace.
Trademark monitoring may include watching:
- New USPTO trademark applications
- Competitor names
- Websites
- Domain names
- Social media
- Online marketplaces
- Other places where customers could encounter similar branding
When a possible conflict appears, acting promptly does not necessarily mean immediately sending a cease and desist letter.
A better first step is often to document the situation, investigate what is happening, determine who began using the trademark first, and evaluate the circumstances with experienced counsel.
That evaluation matters because not every similar trademark is legally infringing.
But waiting too long can create practical problems. If another company continues investing money, marketing, and goodwill in a potentially conflicting brand, resolving the dispute later may become more difficult, expensive, and contentious.
Successful trademark owners identify possible issues early enough to make informed decisions about them.
5. They Work With Experienced Trademark Counsel
This may be the most consistent trait I have seen.
Successful clients generally do not treat trademark work as simple form filling.
A trademark application involves decisions about ownership, the wording and format of the mark, goods and services, filing basis, evidence of use, possible conflicts, and long-term protection. The application may also face questions or refusals from the USPTO.
Those decisions can affect the scope and strength of a registration for years.
Many business owners are permitted to file trademark applications without an attorney. But being able to file an application yourself is different from knowing how to develop the strongest strategy for protecting the brand.
And this is not about using our firm specifically. I would much rather see a business work with an experienced trademark attorney than attempt to navigate significant trademark issues without guidance.
The goal is to have someone who understands the process, the potential pitfalls, the deadlines, and the long-term value of the brand helping guide the strategy.
Trademark Protection Is an Ongoing Business Process
The strongest trademark portfolios are generally not built through a single filing.
They are built over time.
Successful businesses think about trademarks when they choose and launch brands. They protect additional brand assets as the business grows. They maintain their registrations. They monitor the marketplace. And they seek experienced guidance when important issues arise.
In other words, they treat their trademarks like the valuable business assets they are.
Frequently Asked Questions About Trademark Protection
When should a business file a trademark application?
Ideally, trademark issues should be considered before launching or making a significant investment in a new brand. After conducting an appropriate search, a business may sometimes file a federal trademark application before launch based on a bona fide intent to use the mark.
Should I trademark my business name or my logo?
They protect different things. A registration for wording in standard characters can provide protection for the wording without limiting the registration to one particular visual presentation. A distinctive logo may warrant a separate application. The appropriate strategy depends on the brand and the business’s priorities.
Can a slogan be registered as a trademark?
Potentially. A slogan can qualify for trademark protection when it functions as an indicator of source and satisfies the other requirements for registration. Not every advertising phrase automatically functions as a trademark.
How often does a federal trademark registration need to be renewed?
For most U.S. registrations, required maintenance filings are due between the fifth and sixth years after registration, between the ninth and tenth years, and every 10 years thereafter. Different rules apply to some Madrid Protocol registrations.
What should I do if another company is using a similar trademark?
Document what you have found before contacting the other party. Important questions may include who used the mark first, how similar the marks are, how closely related the goods or services are, and whether consumers are likely to encounter both. An experienced trademark attorney can help evaluate the situation and possible responses.
Do I need a trademark attorney to protect my brand?
Not every U.S. applicant is required to hire an attorney, but trademark filing and enforcement involve legal and strategic decisions that can have long-term consequences. Experienced trademark counsel can help with searching, filing strategy, USPTO issues, maintenance, monitoring, and enforcement.
Need Help Protecting Your Trademark?
If you are launching a new brand, expanding an existing trademark portfolio, approaching a renewal deadline, or dealing with a possible conflict, an experienced trademark team can help you evaluate the next steps.
Erik M. Pelton & Associates has been helping businesses protect their trademarks for more than 25 years, with transparent flat-fee pricing and more than 5,000 successful trademark registrations.
Reach out to our team to discuss your trademark protection needs.
This article provides general educational information and is not legal advice. Trademark issues depend on the specific facts and circumstances involved.
