Attorney Ryan Kaiser with Amin Talati Wasserman LLP offers CPG brands advice on establishing a trademark strategy in 2024.

Ryan Kaiser, Partner

February 15, 2024

5 Min Read
Trademark protectionShutterstock

At a Glance

  • The first step is identifying and prioritizing the most valuable marks.
  • It is good practice to conduct a search before adopting any new mark.
  • Like any property, trademarks require diligent maintenance.

In this special three-part series, we’ll be highlighting legal issues and bottom-line challenges that impacted consumer-facing products — including dietary supplements, food and cosmetics — in 2023. This series will provide key takeaways and strategies to help you get ahead of potential problems in the coming year.

Establishing a trademark strategy

2024 is the year to get proactive about your trademarks. A strong, carefully executed trademark strategy can benefit every company's bottom line, especially when implemented at an early stage, and it helps avoid protracted problems down the road. Regardless of whether a business aims for national or international trademark protection, it is always essential to have a plan. What is the company going to register and in which countries? And how will the business prevent infringement and handle it if it occurs? A thoughtful trademark strategy answers these questions while helping a company develop and maintain a robust trademark portfolio.

Prioritizing marks

The first step in developing a trademark strategy is identifying and prioritizing the most valuable marks.  Not all marks are created equal, and companies should allocate resources proportionally. This involves reviewing existing trademarks, as well as future marks and marketing initiatives. A trademark plan should account for new products in the R&D pipeline and geographic markets of interest. Once key marks, products and geographies have been identified, it is essential to assess appropriate clearance and registration activities.

Searching and clearing proposed names

It is good practice to conduct a search before adopting any new mark. This is important because the new trademark cannot be used or registered if someone already owns an identical or similar trademark in the same (or similar) class of products or services. Many types of searches are available, and the cost varies based on their scope and thoroughness. When determining how much to spend on a trademark search, weigh the cost against the risks of not searching. Spending money upfront on a comprehensive search may help prevent wasting tens of thousands of dollars (or more) on having to change an entire brand strategy because another company already uses the trademark and has priority in the marketplace.

Once a mark is cleared, apply for registration in all commercially significant countries. Registration provides many important benefits, particularly in countries that employ a “first-to-file” system of trademark rights. In first-to-file countries, ownership of a mark is conferred on the party who first applies to register the mark, regardless of whether they use the mark.    

Diligence is key

Registration is only the first step in the life cycle of a strong mark. Like any property, trademarks require diligent maintenance to ensure they serve a business for years to come. Here are some best practices to consider:

  • Ensure consistent and continuous use – Trademarks are maintained by use. As such, it is important to ensure marks (especially registered marks) are being used in connection with all relevant goods. It is also important to use marks consistently. This means a company should always use the same capitalization, font and colors. Also, use the same punctuation and spacing every time.

  • Create brand guidelines – A company may have employees, licensees and business partners who use its trademarks regularly. To avoid inconsistent use, create brand guidelines detailing exactly what is required every time a trademark is used.

  • Use the proper trademark symbols – The three recognized trademark symbols in the United States are TM, SM and ®. Knowing when to use each is important. For example, the ® symbol denotes a registered mark, and a company should only use it after it has received a trademark registration. Before a company receives registration, it can use TM or SM to let the public know it is claiming common law rights in the mark. While using these symbols is not required, it lets competitors know that a company owns the trademark and will protect and enforce its rights.

  • Docket, docket, docket – Unlike patents, trademarks can live indefinitely. However, there are regular maintenance filings and requirements. Missing a renewal can put a mark at risk. It is critical to have a reliable system for ensuring that all deadlines are met. Partner with an experienced trademark attorney to ensure all registered marks are properly monitored and maintained.

Policing and enforcing trademarks

Popular trademarks will always be at risk of being copied. Let’s say a company has invested the time, money and resources into developing and registering its trademarks. It is now critical to employ a robust policing and enforcement plan to protect them. Although the idea may seem daunting, the core of a trademark enforcement plan boils down to three simple steps: (1) set enforcement parameters; (2) monitor the market; and (3) take action.

First, a company should work with its attorney to develop the parameters for a policing and enforcement plan. This ensures that a firm can quickly identify problems, take preventive measures and fully understand its rights related to the registered trademark.

Next, it is important for a company to monitor its trademarks so that it can act quickly if copycats try to use or register the mark (or a similar mark) in the U.S. or abroad. Businesses should learn about the types of watch services available and select the one that suits their needs and budget.

Finally, swift action is vital to protecting trademarks when a watch service identifies a threat. This typically involves sending a cease-and-desist letter but may involve other tactics, such as a letter of protest, opposition proceeding or federal litigation. A company’s attorney can help decide what options are available and which is best suited for the situation.

ATW takeaways

Developing and implementing a trademark strategy should be essential to a brand’s management plan for 2024. More importantly, a company must protect its investment by maintaining and policing its marks. A company should work with counsel to set up a maintenance schedule and a step-by-step plan that allows it to address infringement rapidly and effectively.

Next up

In part two of this series, we’ll tackle another important way to protect your business: implementing an effective patent strategy.

About the Author(s)

Ryan Kaiser

Partner, Amin Talati Wasserman

Ryan Kaiser specializes in the protection and enforcement of trademark rights for businesses of all sizes. His diverse trademark practice includes counseling clients on the selection of new marks, clearance searching, U.S. and international registration, licensing, portfolio strategy, anti-counterfeiting measures, enforcement, oppositions, and litigation. Ryan also assists clients with the protection, enforcement, and licensing of copyrights.

For nearly two decades, Ryan has represented clients in a variety of industries, including food and beverage, dietary supplements, cosmetics, pet food and treats, pharmaceuticals, medical devices, consumer products, musical instruments, computer software and hardware, online media, automotive products, publishing, education, and sporting goods. Startups, entrepreneurs, and early-stage food and beverage companies frequently engage Ryan to provide strategic counseling in intellectual property matters. Ryan also provides buy- and sell-side due diligence support related to the merger or acquisition of a company or its intellectual property.

When issues of trademark infringement arise, Ryan is the attorney clients want on their team. While he has significant experience resolving trademark disputes through negotiation, he also regularly litigates before federal district and appellate courts as well as the Trademark Trial and Appeal Board. Clients also turn to him when faced with domain name disputes, including Uniform Dispute Resolution Policy (UDRP) proceedings and lawsuits before courts in the U.S. and abroad.

Ryan is a sought after speaker on trademark and unfair competition issues and has served as Vice Chair of the Chicago Bar Association’s Food Law Committee.

When he is not busy protecting his clients” brands, Ryan enjoys traveling with his wife and children, learning (albeit, slowly) to play the guitar, and dabbling in ultrarunning.

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