I often work with business owners who understand the importance of protecting their intellectual property but insist that it is something they can handle down the road. When you are juggling day-to-day business operations, intellectual property protection runs the risk of falling into the “we’ll get to it eventually” category.
However, the ideal time to file a federal trademark application, for example, is before your mark has value. Failing to protect (and police) a mark that is important to your business can quickly become a headache, especially in the age of social media.
The founders of Yes Way Rosé®—Erica Blumenthal and Nikki Huganir—learned this lesson the hard way.
The founders created their logo and posted it on Instagram to generate interest before launching their products. They weren’t quite ready for what happened next: their company name was being misappropriated all over social media, including on meme accounts, without their consent. The slogan YES WAY ROSÉ® was being shared repeatedly by third parties without giving credit to the founders.
Fortunately, the founders moved quickly to retain an intellectual property attorney and file federal trademark applications for their company name in connection with a variety of goods ranging from wine, to nail polish, to cupcakes. They are now able to handle infringement of their mark by third parties on a case-by-case basis.
How can you protect your mark?
If you are the rightful owner of the mark and are already using it in interstate commerce, it is likely time for you to meet with an intellectual property attorney to discuss the registrability of your mark with the United States Patent and Trademark Office (the “USPTO”).
Even if you are not yet using your mark in interstate commerce but intend in good faith to use it in the near future, it is a best practice to explore filing your federal trademark application on an intent-to-use basis. This filing affords some flexibility; you have 6 months from the date the USPTO issues your Notice of Allowance to either complete your application or request an extension of time to do so. You may file up to 5 Extension Requests, but you must submit evidence (in the form of a specimen) to the USPTO that you are actively using the mark in interstate commerce within 36 months of the issuance of your Notice of Allowance.
Obtaining a federal trademark registration is a straightforward way to protect and add value to your business.
This post is not intended to be legal advice. Please consult an intellectual property attorney to discuss your legal options.
Photograph courtesy of Sara Kerens via Inc.com.
"We would see the logo being reshared by other people. We weren't given credit or ownership," Blumenthal says. "It was this thing on the internet that seemed like property of the internet, not property of these entrepreneurs who were creating a brand."