Brand protection is essential to successful business operations. It is difficult to establish a recognizable brand if multiple businesses are selling the same type of product using the same or similar names or logos.
Since the emergence of the internet and digital marketplaces, businesses have come to recognize the importance of such protection, and have adopted practices and procedures to secure their intellectual property rights in brand names, logos, and taglines.
Emilie Smith, Marquette University Law School Class of 2023, is a legal intern with Direct Supply, Inc., in Milwaukee.
The recent COVID-19 lockdowns, which have forced many in-person stores to pursue online sales platforms, put a spotlight on an increased need for brand protection. Businesses have undergone a shift to focus their attention on a digital marketplace rather than a physical one.1
As a result, businesses that have only operated in physical contexts must become acutely aware of how they can establish their brand in a broader digital world, and how to properly protect it.
This may seem a daunting task, especially for those not familiar with the digital marketplace, but it is certainly achievable. A few simple steps can go a long way in protecting brands on these digital platforms.
The Increasing Use of Digital Platforms
Many people have seen their favorite coffee shops, boutiques, and restaurants move from a physical store to an online platform during the COVID-19 pandemic. Your favorite coffee shops and restaurants now likely have a way to place pickup orders, and the local pet supply store might offer a new online storefront with shipping options available.
According to a study measuring the pandemic’s impact on digital adoption, digital customer interactions in North America have increased from 41% in December 2019 to 65% in July 2020.2 The change is even more pronounced globally, increasing from 36% in December 2019 to 58% in July 2020. Customers have flocked to digital platforms and businesses have responded rapidly to accommodate them.
With this increased virtual demand and response comes increased risks to businesses. According to Adam Brookman, a shareholder at Boyle Fredrickson, S.C., in Milwaukee, there are two primary considerations to take into account when moving to a digital platform:3
First, when a business goes online, anyone can find them. While this can dramatically raise a business’s profile and help reach more customers, it is important to recognize that other businesses and parties are more likely to find and make a claim against an existing business if they believe their brand is infringing.
Second, this increased visibility puts businesses in a position to be more readily copied. Someone looking to start a new business is likely to move to a search engine and look for similar businesses. As they view different webpages and see different branding techniques, they may be more likely to adopt something they see as their own, potentially infringing on another’s brand.
Using Trademarks
When considering intellectual property rights, trademark law offers the most protection to businesses looking to protect their brand, Brookman said.
Trademarks can be used to protect brand names and source identifiers, including words and logos as used as a brand. The common law of trademarks allows one to obtain protection without any type of registration, within geographic limits. Federal registration offers some additional protection, including national priority over a particular mark.
When using a trademark in the common law context, businesses can and should place a simple “TM” symbol immediately after the mark itself to serve as a beacon to those viewing the mark and alert them that trademark rights are being claimed.4 If the trademark is federally registered with the U.S. Patent and Trademark Office, businesses can utilize the ® symbol instead to indicate official registration of the mark.
When using trademark symbols, trademark owners should ensure that they are using the symbols correctly. The "TM" symbol should be used on marks that are tethered to a good or service rather than on the good or service itself.5 Such marks are typically seen as distinctive names, logos, or slogans that identify a source company.
Businesses can also use other stylistic symbolizers to set the word marks apart from the rest of the text or webpage, such as bolded or capitalized letters.6 It is important to consider when federal registration is practical in a business sense. Sometimes paying for a registered mark may not be the best route to go, especially when a mark is used by a small business that intends to stay small and in the same location, or when a business is planning to move in and out of the market quickly. The cost may outweigh the value of registration.
Business owners must assess their business’s purpose and scope to determine whether or not federal registration is helpful.
Best Practices
All of this begs the very important question: How can a business best protect their brand through the use of intellectual property rights?
Brand protection should always be top of mind when creating or maintaining a virtual platform and should be viewed as an essential business practice. Businesses should consider taking the following steps to both establish a brand and protect it:
Complete due diligence. Prior to registering for any trademark rights and spending significant money on building brand recognition, businesses should search the internet for any marks that may be used in the same way they hope to use it. Doing so allows businesses to assess the risks and benefits associated with a certain mark and ensure that they are fully informed prior to asserting rights on a mark.7 This process should include a search of both registered and unregistered trademarks in use, as well as domain name registrations, and a verification of the goods or services covered by the existing mark. Businesses are also able to utilize various trademark watch services for varying fees.
Make claims to trademark rights apparent. Businesses can use a ™ symbol for unregistered trademarks and an ® symbol for registered trademarks to let competitors, customers, and viewers know that they are claiming rights to a mark. They should make sure the mark stands out on the webpage and ensure that it is used correctly. The mark should be paired with something stating or indicating the brand, not simply with a description of a product or business.8
Ensure proper use of the trademark symbol. Businesses should make sure that they are using proper trademark symbols on a mark that is tethered to a good or service, such as a brand name, logo or recognizable slogan.9
Consider federal registration. If a business is interested in expanding, they should consider federal registration for increased protection across the United States.
Keep an eye on competitors. Businesses should make note of who their competitors are and monitor how they advertise or develop their own brands. This can be done by occasionally searching the internet for any businesses using a trademark that may be infringing and by paying attention to any feedback from customers regarding confusion between different brands.10
Consider retaining counsel. If a business is considering federal registration, they should consider finding an attorney who can help with the process. While people can go through the registration processes themselves, having someone familiar with the Patent and Trademark Office can help avoid any rejected registrations for something avoidable, such as insufficient description of goods or selection of classes.11
When to Take Action
Even if a business takes all the necessary steps to protect their brand, there is always a chance that another party will infringe on their trademarks, either at common law or registered. If this happens, business owners should take a moment to consider what action is most appropriate. Options include making contact with the possibly infringing business to inform them of the concerns via a cease-and-desist letter, and, if need be, filing a lawsuit.12
This is not easy. In fact, enforcement is one of the hardest things to do in the trademark world because it is expensive. To ensure the matter is efficiently and expeditiously handled, businesses should speak with legal counsel before sending out demand letters or other correspondence to potential infringers. Counsel can help businesses ensure that cease-and-desist letters are written effectively, and having an attorney’s name on the letter can give it some additional credibility. Hopefully, any matters regarding infringement can be taken care of before incurring additional litigation costs.13
Conclusion: Protection Is Important
As our world becomes increasingly digitized, so do businesses, and the COVID-19 pandemic and quarantine have only sped up this process.14
As business are forced to move to online platforms to sell goods and stay connected with consumers, they also face many new challenges. One such challenge is keeping their brand adequately protected on digital platforms to ensure consumer recognition and avoid potential confusion.
There are best practices that can be adopted fairly easily to help businesses develop, protect and enforce their intellectual property rights as they relate to their brand, primarily through common law or federal trademark rights. Implementing these best practices should help businesses not only adapt to the digital marketplace, but find their place within it.
This article was originally published on the State Bar of Wisconsin’s
Business Law Blog. Visit the State Bar
sections or the
Business Law Section webpages to learn more about the benefits of section membership.
Endnotes
1 How COVID-19 Has Affected the Ecommerce Landscape,Forbes, Oct. 28, 2020
2 Laura LaBerge, et al.,
How COVID-19 has pushed companies over the technology tipping point–and transformed business forever, McKinsey & Company, Oct. 5, 2020
3 Interview with Adam Brookman, shareholder, Boyle Fredrickson, S.C., in Milwaukee, Nov. 3, 2021.
4 Patrick Concannon,
Proper Use of Trademarks and Trademark Symbols, JDSupra, Feb. 8, 2019.
5 CGL Attorneys,
Trademark Symbols (®), TM, SM – A Complete Guide, Cohn Legal, PLLC.
6 Interview with Adam Brookman.
7 Susan Neuberger Weller, “Considering a Purchase, Sale, or Financing? Make Sure Your Trademark Due Diligence is Thorough,”
The National Law Review, February 16, 2022.
8 Interview with Adam Brookman.
9 Trademark Symbols (®), TM, SM – A Complete Guide.
10 Mike Kappel,
Brand Protection for Small Business Owners,
Forbes, Oct. 18, 2017.
11 Interview with Adam Brookman.
12 Kappel, Brand Protection.
13 Interview with Adam Brookman.
14 Laura LaBerge, et al.
