Brand Protection in an AI-Driven World: Part 3 Registering Your Mark
by: Rosanne Yang
In 2021, InfoLawGroup ran a multi-part series on brand protection, a vital part of a company’s operations no matter whether they have a portfolio of 1 or 1000+ marks. While the fundamentals have not changed, in the intervening years, AI has become an increasingly common tool in every step of brand protection - from ideation through registration and ultimately enforcement - and its impacts should be explored in the context of those fundamentals. We therefore are pleased to bring you an updated and expanded take on the fundamentals, new topics, and tips on the use of AI to facilitate your brand protection efforts.
Part 3: Registering Your Mark
In Part 1 and Part 2 of our series, we discussed key considerations and processes in selecting your trademark or service mark. Once you have settled on the mark you want and know that it is clear for use and registration, whether and how to register the mark should be your next consideration. Registration is not always necessary, but in some cases it is not only a good idea but required to establish your rights in the mark. Today, we explore the benefits of mark registration and considerations for scoping your registration approach.
Benefits of Registration
In the United States, trademark rights arise from one’s public use of the mark in connection with the offer of products or services. As a result, unregistered - or “common law” - marks exist and are enforceable. There are limitations in these rights, but it may be good enough in some circumstances. In many circumstances, though, the variety of benefits that arise from US registration - and even applying to register - are worth the additional effort. These benefits are:
Nationwide Rights. Unregistered marks are enforceable only in the geographies where they are actively used. Obtaining a federal trademark registration provides nationwide rights.
Priority. Filing an application with the USPTO secures your priority over subsequent third-party uses and applications.
Deterrent. A US registration, and even just an application, can act as a deterrent to third parties who are conducting clearance before adopting a mark that may be too close to yours.
Exclusion of Infringing Marks/Products.
A US registration, and again here even just an application, provides a basis for the USPTO to refuse third party applications for marks that are too close to yours. The USPTO examining attorneys cannot refuse a third party application on the grounds of a common law mark.
Registrations provide better access to assistance from US Customs and Border Protection in identifying and seizing counterfeit goods as they come over the border.
Legal Presumption. A US registration provides a legal presumption that you own the mark and have the right to use it, which is much better than needing to find and produce documentation to establish your rights in litigation.
Qualifier for Certain Services.
Certain marketplaces, such as Amazon, require a trademark application or registration to participate in their brand protection services.
Registrations grant easier access to BIMI, which helps brands’ emails avoid being caught by spam filters.
Higher Asset Value. Federal registrations, and even applications to some degree, tend to command higher value than unregistered rights when it comes M&A activity, licensing, and securing loans for your business.
To the extent that you have business outside the United States, it is also important to know both that (1) rights are territorial - a registration in the US does not help you outside the US; and (2) some countries recognize trademark rights only on a first-to-file basis, and registration in those countries therefore may be required to have rights. In many countries, you may be eligible to use your earlier U.S. trademark application filing date as the “priority” date in those other countries (as long as the foreign filing is done within 6 months of the U.S. application’s filing), which can give you a needed edge in disputes.
Scoping Your Applications
It is important to scope your application according to your needs and budget, taking several things into consideration:
Exact Mark. Your registration may be limited to the version of the mark you file for. The ability to make changes after it is filed is exceedingly narrow. A word-only mark can be filed as a “standard character” mark to allow for use of that mark in any color or stylization, but not with additional/different words or characters - even a change in spacing can be a problem; an application for a logo or stylized mark is locked in (and even more so if you claim particular colors in your application). Because you need to show proof of use of the filed-for mark before registration and with each renewal, it is vital to get this right.
Classification. All goods and services are classified in alignment with an international treaty, and the USPTO and other trademark offices around the world charge by the number of classes of goods/services filed for. It may be tempting to file in many classes, but that has direct cost implications.
Goods/Services. Your application must be for specifically-identified goods or services within each class. Once those goods/services are described in a filed application, the only changes that can be made are ones that narrow the scope of protection - they cannot be substituted or broadened. Make sure that the identification in the application is correct, and err to a broader scope where feasible.
Actual Use or Bona Fide Intention to Use. Trademark applications and registrations cannot be filed in the United States “just in case” or “to hold it for later.” There must be real use in the marketplace or a real intention to use a mark for the listed goods/services, so be intentional about what you include.
Use It or Lose It. Trademark owners are required to use their marks for all of the listed goods/services on an ongoing basis. As long as they do, the rights can continue to exist and the registration can be renewed. However, where a mark is unused entirely or no longer used for certain of the listed goods/services, the rights and registration will be lost or narrowed accordingly. In other words, be realistic about your plans.
Additional Considerations
When determining how best to protect your mark, there are some additional factors that should be considered.
Timing. Applications generally should be filed as quickly as possible so that your priority is as early as possible. However, consider whether the filing will tip your hand in an undesirable way about your future plans. Filings are very public records -- they are easily accessible via searchable databases, and where competition is fierce, your competitors may even have watch services to keep an eye on what you file, which can help them better predict and adapt to a changing landscape.
It’s on the Record. As noted above, all filings with the USPTO are a matter of public record. Especially if you are pushing the limits on trying to protect a weaker mark or potential confusion with a third party mark, consider what you may need to argue to overcome an objection by the trademark examiner. Those arguments may come back to haunt you.
International Issues. As noted above, registration in the U.S. does not entitle you to use your mark or register it outside the U.S., and some countries grant rights only on a first-to-file basis. Consider whether filings outside the U.S. are warranted to protect expansion plans, manufacturing operations, and/or where counterfeiting is at a heightened risk.
Length of Planned Use. Obtaining a registration can take a good deal of time, and in some countries longer than others. For marketing campaigns that are here and gone, or short-term product lines, the use might be long done with by the time a registration issues. In these situations, the benefits are much narrower.
Manner of Planned Use. Trademark-qualifying use is not just any use. It requires that the context be one in which the intended consumer can identify it as an indicator of source. Among the types of uses that do not “count” toward trademark use are: uses that are merely decorative; internal-only uses; and mock-ups. The use also is required to be in the regular course of business; a recurring seasonal use can be fine, but a “token use” (e.g., sending a single shipment for the purpose of “proving use”) is not.
AI Factors
AI is affecting all market sectors these days, and trademark filing is no exception. We are starting to see AI tools that offer application completion, drafting of responses to an examiner’s objections, application translation for foreign filings, and even filing in foreign offices. That sounds great on the surface, but be very cautious.
You Are Responsible. There are many nuances in filling out applications and the person who signs is responsible (under penalty of perjury in the US) for its content. At a minimum, an AI-produced application needs to be thoroughly checked before signing and submitting it.
Fake Cases. AI tools infamously make up cases, including their existence, quotes from them, and citations. If you use an AI tool to help you draft a response to an objection, every part of it must be checked to ensure that every part of it is verified as accurate and that the arguments it creates are acceptable both under the trademark laws and to you as a trademark owner.
Smart Translation. Translation of the goods and services identification is tricky. Any student of languages knows that there are many choices in translation, and the choice can affect the meaning. Automated translation is usually good enough to get the gist of the content but is not advised for legal documents. Remember: these documents define your rights.
Qualifications to Practice. Where the service suggests it is “filing for you,” vet this very carefully. If you are a lawyer, does this constitute the unauthorized practice of law in the foreign jurisdiction; do you have sufficient qualifications to do this work? Will the application encounter objections under local practice requirements? How will you handle requests for additional information or challenges? If the service is actually relying on local residents to perform the act of filing, are those individuals qualified? How are they vetted?
Beyond that, trademark offices around the world are looking at how to effectively utilize AI during their processing and evaluation of applications. It may be employed to help examiners identify potential conflicts more quickly, to assist them in writing what are known as “office actions” (either substantive objections to an application, requests for technical amendments, or requests for additional information). The USPTO is already using AI in its patent operations, and we expect trademark operations to be similarly included.
If this sounds a little more complicated than you were expecting, do not worry. The good news is that an experienced trademark professional can do these evaluations very quickly and help you right through it. But knowing ahead of time the kinds of things they are considering and the questions they are going to ask will help streamline your interactions and develop a well-thought-through strategy that fits your needs and budget and that will be more sustainable over the long run.
Now that we are through the fundamentals of trademark selection and registration, our series will turn to exploring various aspects of monitoring, enforcing, and licensing your rights, and special issues affecting certain types of content and uses. Stay tuned for more!
Originally published by InfoLawGroup LLP. If you would like to receive regular emails from us, in which we share updates and our take on current legal news, please subscribe to InfoLawGroup’s Insights HERE.