Many of us have started 2014 with resolutions to make healthier choices, but have you considered resolutions for your business? Those who don’t feel confident doing the behind the scenes legal work when it comes to running a business could consider a franchise like the warrior gym franchise opportunities offered by Ninja Nation. This way you are simply opening a branch of an existing business. However, if you’d like to own your business outright, the story of Mad Dogg Athletics may inspire you to work out your business’s trademark protection and enforcement plan. You may be familiar with indoor cycling classes, which have become a fitness sensation. What you may not know is that one company owns the right to use the term “spinning” in connection with providing training and instruction for indoor cycling. That company, Mad Dogg Athletics, was ahead of the pack when it sought a trademark registration with the Patent and Trademark Office (PTO) for the term “spinning” in connection with indoor stationary bicycle workouts back in October 1992. In addition to SPINNING, Mad Dogg Athletics’ registered marks include SPIN, SPINNER, SPIN FITNESS and SPIN NATION, among many others. To keep competitors (such as Body Bike International, S/A) from using their trademarks, Mad Dogg Athletics spends over one million dollars a year on trademark enforcement. Businesses of all sizes can learn from Mad Dogg Athletics’ proactive approach and make 3 trademark resolutions to protect valuable marks in the New Year and reduce the risk of having to take costly remedial action down the road:
1. Prior to investing in a new brand, clear the new trademark with counsel.
Your company has an exciting new product or service. You have engaged marketing to come up with a new campaign and the public relations team is busy planning the launch. But has anyone cleared the trademark with counsel? A new trademark needs to be cleared early in the process, before precious resources have been invested in developing and promoting the new product or service. That’s why it is important that your trademark has been approved by the relevant people beforehand so you are able to save vital funds. And when it has been approved, your trademark will then be published for opposition, giving 30 days for third parties to oppose this application. This is one of the first things that needs to be completed during the early stages of your brand. The cost of a trademark clearance is low-particularly given the stakes of rebranding to avoid or mitigate infringement of a third party mark.
2. Police your marks.
If you own trademarks, regardless of whether they are registered, you have an obligation to police your marks or risk abandonment of your rights. Policing entails monitoring uses and PTO applications that are identical or confusingly similar to your mark for related products or services. If a potentially infringing use is discovered, contact the user by phone and follow-up with a demand letter that the user cease and desist from the infringing use. Where an informal enforcement strategy is not successful, it may be necessary to initiate a proceeding before the PTO’s Trademark Trial and Appeal Board (TTAB) or file a suit in federal court. At a minimum, policing should entail monitoring potentially infringing uses on the Internet with a free Google alert or other Internet tool. In addition, consider paying a watch service to alert you when an identical or similar trademark application has been submitted to the PTO.
3. Monitor new gTLDs.
Many brand owners have been dismayed to find that a third party has registered their trademark as a domain name on one of the existing top level domains (gTLDs) such as .com, .org, .net and .edu without authorization. This year will bring major changes to the domain name landscape as hundreds of new gTLDs go live, including brands-.google, .nike, .bmw, and common words-.app, .home, .book. Brand owners need to be aware of the new gTLDs and consider appropriate steps to protect their marks. At a minimum, trademark owners should record their registered marks with the Trademark Clearinghouse (TMCH). Recording a mark with the TMCH has two benefits. First, you will have the opportunity to register domain names corresponding to your recorded mark before the general public. Second, if a third party attempts to register a domain name that is identical to a mark that you recorded with the TMCH, that third party will receive notice that the mark is recorded with the TMCH. While the notice will not stop the domain name from being registered, if the third party ultimately registers the domain name, you will be alerted to the registration.
If you have questions about protecting your business’ trademarks, please contact our Intellectual Property and New Media team: Dina Leytes (email@example.com), Kate Legge (firstname.lastname@example.org) or Ashley Shea (email@example.com).