The following is an edited transcript of my video An Ounce of Trademark Protection is Worth a Pound of Curing a Trademark Dispute.
There is a very well-known quote from Benjamin Franklin about an ounce of prevention being worth a pound of cure. This statement is really true when it comes to trademarks.
I really love Ben Franklin, he was such a unique inventor of so many different things, and scholar, and really, a Renaissance man. When I came across this quote recently, I was reading something that had nothing to do with trademarks, and it really sparked a light bulb for me, because an ounce of trademark prevention or protection is worth a pound of curing a trademark dispute.
Yes, it takes some time and money to protect a trademark upfront. Not only do you want to have a bold, creative name from the outset, but you want to take the steps to search it and to apply and register it. That’s where there are some costs involved, both government fees and attorney’s fees, if you’re working with a lawyer, as I recommend. But the costs are reasonable, and the return on investment… You know I have another quote about the return on trademark investment, or ROTI. The return on that investment is tremendous because it is so valuable in curing or preventing a trademark dispute.
Why is it so valuable to do that? First of all, you’re in the trademark database at the USPTO 24/7/365. USPTO examiners can find your trademark, and they might cite it as a conflict and block others just because you’re in that database. Because other parties, other people, other lawyers, search that database when they are going through the steps to clear new brand names, and they may come across your name and change their plans because they saw it. That protection right there you may never know about, but it is so invaluable to prevent a situation or a dispute from ever having arisen.
Having that registration also allows your brand to use the ®. That symbol helps warn others that you are protected, that this is valuable to you, that there is likely to be a problem if they copy it. It also is a great symbol to communicate to your employees and your customers about how important your brand is and how you have invested in protecting it.
Having that protected trademark in the USPTO also makes it easier to do takedown notices – takedown notices with online platforms, social media, domain names, Amazon and other e-commerce sites. It’s much easier to get a takedown when you have a registered trademark standing behind your brand.
If you have to send a demand letter to someone because they are copying or infringing your trademark, having that registration makes it a much stronger letter and generally makes such a situation much easier, quicker, and less expensive to resolve. But in the event that you do have to go to court to enforce your trademark rights, having that registration again provides tremendous value because it allows you to seek more damages. It allows you presumptions in the courtroom, and it allows you to sue in ways that are not possible if you don’t have the federal trademark registration.
For all of these reasons, an ounce of trademark protection is worth a pound of curing a trademark dispute, with all due respect to Ben Franklin for the19 inspiration.