Trademark Protection for Startups: Essential Steps to Secure Your Brand

When you are building your brand, one of the most important steps is securing and protecting your trademarks. A strong trademark strategy helps establish brand identity, prevents legal issues, and enhances the overall value of your business. Here are key considerations to keep in mind when navigating the trademark process.

Understanding Trademarks

Your trademark is your brand’s identity—it’s how customers recognize your business. A trademark can include names, logos, slogans, and other unique identifiers. For example, Nike’s name and its signature swoosh logo are both trademarks. Additionally, businesses often develop multiple trademarks, including taglines, product names, and proprietary materials.

Types of Trademarks

1. Taglines & Slogans – These are catchy phrases that help define your brand. For instance, Nike’s “Just Do It” is a registered trademark.

2. Sub-brands – Some businesses have distinct product lines with their own names. Nike’s Air Jordan and Air Max are prime examples.

3. Proprietary Material – Unique names for your company’s specialized products or technologies, such as Nike’s Dri-FIT fabric.

Identifying Your Trademarks

To start protecting your brand, take inventory of existing trademarks by reviewing your website, product packaging, marketing materials, and company documents. Look for unique symbols, terms, and names that define your business. If there’s a name or phrase you’d be unhappy to see used by a competitor, it might be worth trademarking.

Approach trademark development with a growth mindset - consider standardizing a tagline across your marketing materials to strengthen its brand identity. If an internal product name has branding potential, integrate it into external branding to solidify its position in the market.

Filing a Trademark Application

It’s crucial to file trademark applications as soon as you are confident in your brand choice. Early filing secures your priority in line, allowing legal examination to take place before you invest heavily in branding. This helps identify potential issues before they become costly mistakes.

Common Trademark Issues

1. Weak Trademarks – A trademark must be distinctive enough to serve as a brand identifier. Descriptive trademarks, like “Creamy” for yogurt, are too weak. Stronger trademarks are made-up words (e.g., Kodak) or common words used in unrelated industries (e.g., Apple for computers).

2. Trademark Conflicts – Someone else may already be using a similar trademark, which could lead to legal issues. Conducting a trademark search before committing to a brand name is essential.

Trademark Search: Avoiding Infringement

A trademark search helps determine if a name is already in use. This includes:

• USPTO Database Search – The United States Patent and Trademark Office (USPTO) provides an online tool to check for existing trademarks.

• Internet Search – Even if a name is not federally registered, another company may have common law rights through consistent use.

If you do find another brand name that is similar to yours, consulting an attorney is advisable. There may be legal strategies to clear the path to securing your preferred brand name.

International Trademark Protection

If you plan to expand internationally, consider registering your trademark through the Madrid System, a streamlined process managed by the World Intellectual Property Organization (WIPO). This allows businesses to file one application that extends to multiple countries.

Long-Term Trademark Strategy

Once your trademarks are registered, maintaining and protecting them is crucial. Here are four key aspects:

1. Monitoring & Enforcement – Regularly check for unauthorized use of your trademarks. You can use monitoring services or conduct your own research. If infringement occurs, send a cease-and-desist letter or seek legal action.

2. Continuous Use – U.S. trademark law requires continuous use of a trademark. If a registered trademark goes unused for three consecutive years, it may be canceled.

3. Proper Trademark Symbols – The ™ symbol can be used with an unregistered trademark, while the ® symbol is reserved for federally registered trademarks.

4. Trade Dress Protection – Unique product packaging or designs, such as the Coca-Cola bottle shape or Goldfish cracker design, can become protectable trademarks over time.

Final Thoughts

A well-planned trademark strategy strengthens brand identity, provides legal protection, and adds long-term value to your business. By identifying, registering, and actively monitoring your trademarks, you safeguard your brand’s reputation and market presence. If you need guidance on securing your trademarks, consult a trademark attorney to navigate the process effectively.

[WATCH]: Sarah Stemer's Trademark Tips For Startups and New Companies

From company name to portfolio of registered trademarks here we go!

Going from naming your new company or startup, to having a portfolio of registered trademarks can seem daunting. It’s important though, so we made this video to make the process a little more approachable for you. Trademark Attorney, Sarah Stemer, discusses trademark tips for startups and new companies when they are in the process of developing or protecting their brand, with a brief discussion about trade dress, international trademarks, trademark searches and common pitfalls. Part of Stemer Law’s TM101 series.

"Ornamental" Rejections for Apparel Trademarks

A logo or brand printed on a shirt or baseball cap might not be a trademark.

• Learn about common trademark mistakes that could jeopardize your brand’s success.

• Understand the difference between a brand logo and a legally protected trademark.

By the end of this article, you’ll know how to take the necessary steps to protect your clothing brand, safeguard your apparel logo, and avoid costly mistakes that could impact your business.

The use of a brand in that way could be seen as a decoration, or merely “ornamental." The actual trademark is usually printed on the sewn-in tag or on the hang tag where you usually find the price. That is where the brand acts as a "source identifier.".

In order to qualify as a trademark, the brand must be a “source identifiers.” In other words, a consumer would have to be able to look at the branding and know which company is offering the goods or services. When a consumer sees a design on the front of the shirt, it might register as just a design. However, consumers know that the tags are where the brand name can be found. Sometimes, a brand on the front of a shirt or hat can act as a trademark, if the logo is not predominant and looks like a brand instead of a decoration.

This issue arises then new apparel companies come out with their first batch of clothes, but print their logo on the front of plain customizable clothing, such as Hanes or Gildan. The tags will still say “Hanes” or “Gildan.”

As part of the United States Patent and Trademark Office (USPTO) application process, you are required to show that your trademark is being used on your products as a source identifier. For apparel, a common option is to submit a photograph showing the trademark on an article of clothing. Unfortunately, if the photo only shows the brand name on the front of the shirt or hat in a way that looks like a decoration, you will likely receive a rejection from the USPTO. The only way to overcome the rejection is to show your brand name as a source identifier, such as on a hang tag or a sewn-in tag.

Gwyneth Paltrow's Health and Beauty Company, Goop, Sued For "Reverse Confusion" Trademark Infringement

Last week, Good Clean Love, Inc. (GCL), an Oregon-based woman’s personal hygiene and health company, filed a Trademark infringement lawsuit in Federal District Court against Gwyneth Paltrow’s beauty company, Goop. In its complaint, GCL asserts multiple claims, including federal trademark infringement, false advertising, unfair competition, and analogous claims under Oregon state law.

The root of the dispute is that Goop is allegedly using a tagline that is confusingly similar to GCL’s house brand. GCL says it has used “Good Clean Love” for its line of sexual health products for over 20 years, while Goop has used “Good. Clean. Goop.” for its similar sexual health supplement for a much shorter time period.

In order to determine whether there is a “likelihood of consumer confusion,” Courts look at not only the similarity of the trademarks themselves, but also the similarity of the underlying products. Trademarks do not need to be identical - it is enough if they are similar in sound, appearance, meaning, or commercial impression. If, overall, there is a likelihood of confusion, whoever used the trademark in US commerce first, has superior rights, and can stop the junior user from continuing their use of the infringing trademark.

The Goop case is a good example of a “Reverse Confusion” trademark infringement, where a newer bigger company comes onto the market and overwhelms the trademark and commercial standing of the older company, who actually has superior rights, despite being smaller.

“Reverse Confusion” occurs when a newer, bigger company comes onto the market and overwhelms the commercial standing of an older, smaller company’s brand.

In addition to impacting their sales, GCL worries that the confusion will damage their reputation. They allege that Goop uses known harmful chemicals in its products, whereas GCL’s products are “truly clean.” If consumers start to think that Goop produces the GCL’s product, consumers will also believe that GCL’s products contain these harmful ingredients.

Goop, on the other hand, called the lawsuit “meritless.” Interestingly, according to GCL, the day after Goop received GCL’s pre-suit cease and desist letter, they doubled down with their use of the infringing tagline, flooding the market. We will see if this is predictive of how Goop defends their position.

Filing this law suit does not come without risks for GCL. Because their house trademark is comprised of basic words in a somewhat descriptive order (“good”, “clean” and “love”), it could be deemed generic. This would leave them at risk of a viable counter-attack by Goop, which would be a devastating loss for the company. The reality is, there may come a time when a trademark owner finds themselves in a defensive position. The stronger a trademark, the easier it is to defend, which ideally will inform a company owner during the process of choosing their brand name.

A "Shoe"-In This Time, or Will They Get The Boot Again? Timberland Asks Appeals Court for Trademark Protection Over Their Iconic Footwear

Timberland is asking the Fourth Circuit Court of Appeals for trademark protection over their iconic boot (not just the name or logo of the company, but the boot itself!)

The shoe company first filed their unsuccessful trademark application to the United States Patent and Trademark Office nearly 9 years ago and have been appealing their way up the ladder since. Now, they will have to convince the Court that their boot is distinctive enough to serve as a brand, and that the design of the boot has no function.

Product configuration trademark protection is extremely hard to come by, but they are not unheard of, for shoes in particular.

More on this soon.

Stemer Law’s Colorado IP Troll Case Heats Up, As Judge Issues Stark Warning

A few months ago I wrote about a Law360 article that quoted me calling my adversaries “trolls” to a Judge in Federal Court.

Those cases are still moving along, somehow.

In case you missed it - over the summer, a California bong-maker, GS Holistic LLC, filed nearly 50 identical cases in the District of Colorado, alleging that dozens of Colorado smoke shops were intentionally selling counterfeit versions of their bongs. In true IP-Troll fashion, the mass of complaints filed by a Florida law firm were copy and pasted, with big scary words intended to intimidate Defendants into settling, but without any meaningful facts or allegations.

Well, Federal Magistrate Judge N. Reid Neureiter caught wind of these robo-filed cases and issued a strongly-worded Order to Show Cause, requiring Plaintiff and Plaintiff’s lawyer to show up in person to assure the Court that they have a legitimate basis for their cases and that they plan to litigate according to the rules. We all gathered in court for the September hearing, where things seemed to get back on track.

That did not last.

Fast forward to January 12, 2024, after Plaintiff failed to follow local rules, federal rules, and deadlines, the Judge issued another biting order. In the order, which is the subject of the latest Law360 article about the cases, he called out Plaintiff for their “chaotic” prosecution, saying he has “no confidence” they can successfully work on this case load. He issued a stark warning too - if they continue their violations, he may end up dismissing all of their cases.

While the January 12 order did indeed “chide” Plaintiff, as the Law360 headlines says, it is my opinion that it also shows the the District of Colorado and Magistrate Judge N. Reid Neureiter's commitment to finding a fair result for all litigants, in spite of the complications that these mass filings have created. As I am quoted as saying in the Law360 article - "the record is clear that the plaintiff has been given a multitude of chances to course correct, but they continue to flounder.”

Not as blistering as calling them trolls on the record in open court, but it is still the truth … and what I said about my clients is also the truth, "…the Defendants, as small business owners, are an important part of Colorado's culture and economy and will not be cast aside."