Buchanan Ingersoll & Rooney Intellectual Property Shareholder Lloyd Smith and Counsel Bryce J. Maynard authored an article in the September 26, 2011 edition of VA Lawyers Weekly.

The article, "What's in a trademark? Protecting your brand," provides an overview of trademarks — including the courts' evaluation spectrum — and suggests the most basic steps a company should take to protect its brand:

  1. Start strong.
  2. Do your homework.
  3. Put the public on notice of your rights.

Start strong.

"Trademarks are evaluated by the courts along a spectrum of distinctiveness," wrote Smith and Maynard, from "arbitrary and fanciful" — the strongest and most protected — to "suggestive" and "descriptive."

"If a new brand is descriptive or weak, a company will have a difficult time protecting the brand and may not be able to prevent others from using a similar mark or even the same mark," they continued. "Thus, it is important when launching a new brand to pick the most distinctive name possible, and preferably an arbitrary or fanciful mark."

Do your homework.

Initial research to determine brand availability will "determine if it is already being used on products or services that are similar to yours," the article explained. "Ideally, your company should engage a trademark attorney to conduct a search of registered and unregistered trademarks and advise you as to whether any of them pose a potential threat," but the United States Patent & Trademark Office website features a searchable database of registered and pending marks.

Smith and Maynard also suggest registering a domain name incorporating the new trademark to preserve your brand's space on the Internet.

Put the public on notice of your rights.

"Most importantly, register your trademark with the USPTO," the co-authors wrote. Though common law trademark rights begin as soon as a mark is used, "a trademark registration give you important legal presumptions that help you enforce your rights." A registration will also grant you priority over any confusingly similar marks adopted subsequent to yours.

Monitoring and protecting your mark is the final step. "If you do not protect your trademark, it may become a generic term which you cannot prevent others from using," Smith and Maynard explained, citing aspirin and escalator as former trademarks.

Should your mark be infringed upon, seek legal counsel to determine if a cease and desist order is appropriate. Still, "most trademark disputes are resolved amicably," the article concluded.