Trademark Toolkit for In-House Counsel: Can We Trademark This?
Introduction by Joseph Aquilina, Vice President & Deputy General Counsel, Consumer Brands Association
As we stride boldly into 2025, the realm of Consumer Packaged Goods (CPG) is navigating uncharted waters filled with regulatory uncertainties. Amid these challenges, the fundamental aspects of launching new products and strengthening existing brands must remain at the forefront. Brand integrity is crucial—not just for safeguarding your company’s reputation but also for preserving your intellectual property (IP) in a competitive marketplace.
In this enlightening article, legal expert and CPG Legal Forum’s Executive Partner at Faegre Drinker, delves into the pressing questions every in-house counsel encounters regarding trademarks. Read on for an insightful roadmap designed to navigate the complex landscape of branding.
Understanding Trademarks: What You Need to Know
What Is a Trademark?
Before diving into specific inquiries, it’s essential to clarify what we mean by trademark. Trademarks encompass words, symbols, and phrases that differentiate your products from those of competitors. In contrast, patents protect inventions, while copyright safeguards creative works like books and music.
The Essential Questions: A Roadmap to Trademark Success
When your business team is eager for answers about a potential trademark, it’s vital to equip yourself with the right questions. Here’s a thorough checklist that will assist you in assessing whether a trademark is available, protectable, and warrants the right amount of investment.
Key Questions to Consider
What is the primary objective?
- Are we looking to (a) use this name without third-party objections, (b) prevent competitors from using it, (c) register with the Trademark Office, or (d) all of the above?
- This helps clarify the intent and the necessity of the trademark search.
Have we previously used this name?
- Specify the duration and any interruptions in usage.
- This insight will help determine existing rights and whether a trademark search is necessary.
Is the name a term of art?
- Understanding this will inform whether the name can be registered or is too descriptive—effectively available for anyone to use.
Is the name an acronym?
- What does it stand for?
- The trademark search may need to include the full phrasing.
When is the anticipated launch date?
- This dictates the urgency for trademark searches and applications.
Have any initial trademark searches been conducted?
- Informal searches can reveal potential barriers early in the process.
What are the implications of changing the name later?
- Understanding the costs and time associated with rebranding can inform your decision-making.
Was the name inspired by competitors?
- Aiming for a "no" response here will reduce the risk of trademark infringement.
What product or service will this name represent?
- Specific details aid accuracy in trademark searches and fulfill application requirements.
Is this product or service expected to endure?
- If it has a short shelf-life, registration might be unnecessary.
In which geographical areas will it be used?
- Understanding your target geography is crucial for effective trademark searches and applications.
How vital is this name to our brand?
- Is it a "crown jewel" or merely an accessory? The answer governs investment levels in searches and applications.
Who designed the logo?
- If an employee created it, your company likely owns the rights. Otherwise, ensure contracts are in place.
Will the logo appear consistently?
- Knowledge of format and color is essential before filing applications.
- Will you need to secure a related domain name?
- Knowing the availability and cost of desired domain names is crucial for your overall branding strategy.
Conclusion: The Path Forward in Branding
Securing answers to these pivotal questions during your preliminary discussions can save considerable time, effort, and avoid unforeseen pitfalls down the road. The payoff? A brand that stands the test of time. Feel free to reach out with questions—happy branding!
For further reading on trademark registration, consider visiting the United States Patent and Trademark Office for comprehensive guidance.
By following this structured approach, your in-house counsel can effectively navigate the complexities of trademarking while fortifying the essence of your brand. Let’s get to branding!
