How to Protect Brand When Trademark Takes a Year?

One of the best protections you could give to any brand is through trademark registration, giving you exclusivity to the name, logo, slogan, or other identifiers.

Trademark applications usually take a long period of time, sometimes up to a year or even more. In this time, the brand is vulnerable to unauthorised use, counterfeits, or imitation.

Thus, how to protect brand when trademark takes a year? Herein, we unlock the best strategies, utilities, and legal methodologies that could work in your favor while protecting your brand during this normally long period of the pendency of the application in the trademark office.

Trademark Process: An Overview

Before discussing how to protect your brand while your trademark is pending, one needs to know the process of a trademark.

The process of registering a trademark is done in several stages:

Trademark Search: The trademark search is really indispensable prior to filing. This would make sure that no one else has a mark similar, hence one could avoid any conflict with a pre-existing trademark and decrease refusal chances.

Trademark Application Filing: Once the search confirms that your trademark is unique, you will be required to file an application before the relevant trademark office, such as the United States Patent and Trademark Office (USPTO), European Union Intellectual Property Office (EUIPO), etc.

Examination: The trademark office will examine the application for any similarities with an already registered trademark and if the application meets the legal requirements. In the case of some deficiencies, the office will communicate for your corrections.

Opposition Period: Once your trademark passes examination, there is a period of time, usually 30 days, during which other parties may oppose your trademark on the basis that it infringes on their rights.

Registration: In the case of no opposition, your trademark will be registered, and you will have exclusive rights to use it.

Given this trademark application process, which can be quite long, your trademark may be “pending” for up to a year or even longer. This, however, does not mean you should sit and wait for the registration to be complete.

How to Protect Brand When Trademark Takes a Year?

Following are a few ways you can protect your brand in the meantime.

Use “TM” to Establish Common Law Rights

You can use the “TM” symbol even before your trademark is registered, identifying that you are claiming rights in a name, logo, or slogan.

The “TM” symbol does not provide the legal protection afforded by the registered ® symbol but does provide notice to the public that you are using the mark and claiming ownership of it.

The use of “TM” will be helpful in establishing common law rights, which are rights you gain simply by using a trademark in commerce, even if it’s not registered.

In case of a dispute, having used the “TM” symbol can help in proving prior use of the mark and your intent to protect it.

Common law rights can offer some level of protection in the following ways:

Priority if there is a Conflict: If another business starts using the same or a confusingly similar mark during the pendency of your application, you may be able to assert your rights based on your prior use of the mark.

Regional Protection: Common law trademark rights can extend protection to your trademark in the geographical area where you are actively using it.

If you operate within a specific city or state, common law rights may be able to give you some form of enforcement of your brand in that area before national registration.

Register Your Trademark in Other Jurisdictions

Consider filing for multi-jurisdictional trademark protection if your plan is to take your business international, or to protect your brand in more than one region of the world. This will particularly be so when your brand has grown at such a rapid pace or attracts so much attention.

Even if your trademark application takes a year in your home country, you have the following options:

Madrid Protocol: Under the Madrid System, an enterprise is allowed to protect its trademark in a number of contracting parties by filling a single international application.

It could be one way of extending protection to your brand in a number of territories pending applications in your home country in a more cost-effective manner.

National Filings: If your brand is picking up in a certain market, consider filing for protection directly with the relevant trademark authority in that country.

For example, if you’re in the U.S. and expanding into the EU, registering your trademark with the European Union Intellectual Property Office can provide protection in all EU member states.

The benefits of registering in other regions are that you have a better defense against would-be infringers while you’re waiting for the grant of your primary trademark.

Maintain a Clear Brand Identity and Use

In the meantime, while your mark is pending, it is very important to continue using your brand consistently and with strategies.

The more you use your brand in commerce, the stronger your common law rights will become. This is so important if a trademark dispute were to arise.

Some key steps to take during this period include:

Uniform branding: The brand name, logo, and other marks must appear uniformly on the website, social network profiles, advertisements, packaging, and products. Inconsistent use of a mark can confuse the public and ultimately weaken one’s position in claiming exclusive rights to a mark.

Document your use: Be sure you are recording all the times and places of using your mark and describing where you used your mark in. Also, this involves documenting dated material from advertising and marketing campaigns to packaging products to invoices to advertisements with your mark.

Sometimes such proof of use records may prove quite critical to an attorney should prior use in court ever be debated.

Monitor Online Platforms: Regularly monitor social media platforms, online marketplaces, including Amazon, and other websites where your brand may be misused or impersonated. Tools like Google Alerts and brand monitoring software can help you track unauthorised uses of your brand.

Use Non-Disclosure Agreements (NDAs) and Contracts

If you are dealing with third parties-manufacturers, partners, distributors, or influencers-during the pendency of your trademark, make sure that the parties involved sign a Non-Disclosure Agreement or Confidentiality Agreement.

These contracts will prevent others from using your intellectual property without your consent.

An NDA will:

Avoid Exposure of Your Brand Identity: During the pending period of your trademark, you might not want to share all the details regarding your brand or mark with others, as you might be testing something or experimenting with your brand.

The NDA will, in such cases, legally prohibit one from disclosing or using your mark.

Set Legal Boundaries for Usage: NDAs and contracts can also spell out how third parties use your mark, protecting you against the infringement of brand rights before your trademark is officially registered.

In the case of an attempt to infringe on a trademark by anyone, while the waiting period is going on, an NDA or agreement will help strengthen the case that you have tried to protect your brand from the very beginning.

Keep Monitoring for Infringement

While pending, it is still important to be vigilant and monitor your brand for infringement. During this period, there is a real risk that someone else may use or imitate your mark.

Following are some ways to monitor and address infringement:

Trademark Watch Services: Trademark watch services will monitor newly filed trademarks with the goal of finding potentially conflicting marks. If a similar trademark is filed, you can oppose the registration before it becomes official, protecting your rights in the process.

Online Search: Conduct periodic online searches regarding your brand and relevant keywords to find unauthorized uses. This includes searching of social media platforms, e-commerce websites, and search engines.

Legal Action: It may be in your interest to send a cease-and-desist letter to potential infringers if you think you have found one.

A cease-and-desist letter is a document in which an owner of a trademark demands another party to cease use of a trademark when such use may lead to possible legal ramifications.

Use Branding as a Strategic Tool

The trademarking process can take time, so you can’t necessarily protect your brand, but branding strategies to develop loyalty with your customers can go a long way toward developing your identity in customers’ minds.

The more you build up your brand, the more difficult it would be for another entity to steal or mimic it.

Build a Reputation: While waiting for the trademark pending period, build brand recognition. Make sure your branding is consistent and memorable across all customer touchpoints.

Educate Your Audience: Let your customers and stakeholders alike comprehend that your brand is now officially protected. Use your website, social media, and email campaigns to show how serious you are when it comes to intellectual property.

Leverage Your Brand’s Story: Sharing your brand’s story and mission can help solidify its identity in the minds of consumers. It is also an emotional shield that helps protect your brand against potential imitators or infringers.

Prepare for Trademark Opposition and Legal Challenges

During the opposition period of your trademark application, be prepared for others to oppose your trademark.

In case of opposition against your trademark, the opponent may claim that your mark conflicts with their pre-existing mark or that your mark is too generic or descriptive.

To prepare for this:

Consult a Trademark Attorney: If you think there may be a problem, it is a good idea to consult a trademark attorney who can guide you through the legal complexities of your application and prepare you for the defense of your trademark, if necessary.

Oppose Conflicting Applications: If another person applying for a mark that conflicts with yours, sometimes you can filing an opposition on the other party application.

Maintain Your Brand’s Integrity Post-Registration

Once your trademark is registered, you will have ongoing responsibilities to maintain and protect it, including:

Renewing Your Trademark: Trademarks are subject to renewal and must be re-registered every 5 or 10 years, depending on the jurisdiction. Be certain that you understand the renewal requirements.

Vigilance: Be incessant in efforts to uncover the infringer or infringers, taking additional action for safeguarding one’s legal rights accordingly.

The trademark was registered; only this is not just the first part but an ongoing process in nature. Protection and enforcement on a priority basis will defend your brand for its value and integrity.

Use Your Trademark Actively: The failure to continuously use your trademark could call on a cancellation of rights against your trademark in most states and in the federal government. In order to maintain its status, it has to be utilized in commerce.

Enforce Your Rights: Once your trademark is registered, the onus is on you to enforce your rights. This may involve sending cease-and-desist letters to infringers or taking legal action against those who violate your intellectual property.

Failure to act on infringement could result in the loss of your trademark rights due to a concept called “laches,” which means that if you wait too long to enforce your rights, you could lose them.

What’s Next?

Protecting your brand during the interim period while your trademark application is pending is crucial to prevent potential infringement and safeguard your brand identity.

It may be difficult to know about trademark law, therefore working with a knowledgeable intellectual property attorney guarantees that you put risk-reduction measures into place.

While awaiting your registration certificate, proactively monitor the market for any signs of trademark infringement and enforce your rights to maintain the integrity of your brand.

Consider expanding to international trademark protection to secure your brand across different regions, addressing the challenges of varying trademark classes and legal requirements.

Trademark holders must stay vigilant in protecting their assets by leveraging tools that track unauthorised use and swiftly address infringements.

Bytescare offers robust brand reputation management services, ensuring your digital identity is protected and your online persona remains credible.

Don’t leave your reputation to chance—book a demo to experience our solution firsthand and take the first step toward building a strong brand image that resonates with your audience. Your brand’s success starts with a solid reputation!

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