By: Sharon Toerek, Principal, Toerek Law and Author, the Agency Protection System
If your agency performs a lot of branding assignments, it’s very likely that at some point you’ve dealt with a trademark law challenge – maybe a brand that you proposed and your client wanted loved was unavailable, or perhaps neither the agency nor client performed the necessary brand protection due diligence, and now there’s a problem with implementing it (after the parties have already spent a lot of time and money).
Unfortunately, I’ve seen both of these scenarios occur with my agency clients. So, how does your agency avoid, or at least reduce the risk, or a trademark law issue in a client branding assignment? First, it helps to understand the steps to trademark brand protection. Second, knowing some fundamental things about trademark law and brand protection can really make your agency stand apart as a valued partner to your clients on branding matters.
There are three basic stages of the trademark law process to which every branding agency is likely to be exposed:
- Trademark Clearance- Clearance is the most important step in brand protection, because it’s the step that involves the most judgment and decision-making during the branding process. I encourage agencies to start their trademark clearance due diligence with some cost-free research by using the internet search engines and the searching tool at www.uspto.gov, and by also checking available domain names, but too many agencies think this is the finish line rather than the starting point. True trademark clearance is an art and science that involves market understanding along with trademark law insight. Don’t scrimp on this part of the process, and do your clients a favor by not allowing them to do so either.
- Trademark Registration – Once you pass the hurdle of clearance and have decided to pursue a brand, federal trademark registration is the next step to client brand protection. The federal trademark registration process can easily take a year from application to conclusion, so I advise submitting an application immediately upon decision point to get the Trademark Office started on examining your application while you work on implementing the client’s brand. What’s this got to do with your agency? Your client will need the agency’s help with the necessary graphics, artwork, and use evidence to demonstrate its implementation of the trademark.
- Trademark Maintenance and Brand Protection – The trademark law will require that your client be diligent about monitoring its brand. This means bringing any trademark conflicts your agency learns about in the industry to your client’s attention so they can take prompt action. It may also mean the agency providing necessary examples of trademark use to the client, who might need them to maintain the trademark registration or take action on an infringement.
Branding agencies that understand trademark law and brand protection can add a ton of great value to their service to the client, and avoid a lot of unnecessary cost and wasted time at the same time. Ultimately, it’s the client’s legal responsibility to clear and protect its trademarks, but you can help them get there easier and faster – and look like a rock star in the process.
How does the agency stay on top of brand protection issues? Having a clear process for communicating with the client about trademark law issues, and a documented workflow to ensure that no trademark law due diligence is missed, are the best ways.
I hope you found this information helpful! To make the trademark law and brand protection process as efficient as possible for your agency, I included both an easy-to-use Trademark Process Checklist and a Trademark Clearance and Protection Model Timeline (and many other templates and documents the Agency will need to manage its legal affairs) inside my Legal + Creative Agency Protection System. You can learn more about the system here.
And while you’re there, you can also download a number of free checklists and tools that your agency can use right away.