“With great [brands] comes great responsibility.”
— Uncle Ben Parker
When it comes to proactive brand protection, the absolute best thing a company can do is to obtain a U.S. trademark registration.
Obvious Trademark Registration Benefits
- Legal presumptions about the mark’s ownership and the owner’s right to use the mark.
- “Constructive notice” of the mark owner’s rights in that mark (thus, no possible innocent use by an infringer after registration).
- The ability to use this notation ® with that registered mark.
- Over time (after five years of continuous use and registration), the mark attains “incontestable” status, meaning that legal challenges to that mark are quite likely very limited.
Less Obvious Trademark Registration Benefits
Public Records
Every federal trademark registration (and application) appears in the public records of the U.S. Patent and Trademark Office where every competent trademark search is performed. This provides at least two substantial advantages to that trademark owner: (1) those records are searched by U.S. trademark examiners, who will cite a registration or prior-filed pending application against a confusingly similar mark in a newly-filed trademark application (so the company’s brand it protected without the company being involved or even knowing about it); and (2) those records are searched by parties seeking to clear proposed trademarks – we do this for clients all the time, and often advise that an alternative mark be selected because we perceive the potential for conflict with an already registered trademark or pending trademark application (and again, this effectively protects a company’s registered brand without any action or expense by the company).
U.S. Customs & Border Protection
A registered trademark can be recorded with U.S. Customs and Border Protection (CBP). The cost is minimal (less than $200 for 10 years) but the advantages are considerable. CBP officers can review a database of such recorded registrations to assess when an incoming shipment contains suspected infringing product(s). If an initial determination is made that the goods are not genuine that shipment is detained, the brand owner is contacted to check for product authenticity, and the importer notified about the detention. If CBP ultimately determines that the goods being imported are not genuine, those products are subject to forfeiture and destruction (and here again the owner’s brand is being policed by others – in this case the CBP – without the brand owner’s direct involvement).
Of course, CBP doesn’t catch and stop all counterfeitly-branded products from reaching the U.S. market. The U.S. has 328 ports of entry (via land, air, and sea) for CBP to monitor. However, in 2021 CBP made over 27,000 seizures based on intellectual property CBP registrations worth an estimated value over $3.3 billion (this includes seizures based on copyright registrations, too).
Online Product Sales Protocols
The use of online product sales platforms has led to an associated increase in the trading of infringing products on such platforms. As a result, every platform has instituted protocols for attempting to ensure the brand authenticity of products offered for sale on that platform. Amazon, for instance, has created the “Amazon Brand Registry” to verify true brand ownership. An owner of a pending U.S. trademark application or registration can enroll that brand (for free). One feature of such registration is that Amazon – via automation (read: AI) – claims it will “[s]top bad listings before they get published.” There are additional benefits, such as a streamlined process for a brand owner to report infringements to Amazon and access to other Amazon-based IP protection tools.
With minimal time and expense, there are thus several ways for a registered trademark owner to expand the footprint of its brand protection. A trademark owner can also become even more proactive in this regard by engaging a third party to monitor that mark. Such services can watch trademark registration activity in most countries, look for misuse of that brand on social media platforms, or generally review use of that brand anywhere on the internet.
