Launching a new brand is typically an exciting process for marketing and branding teams. Although selecting a new brand name that does not infringe on the rights of others and for which exact-match domains exist is becoming increasingly more difficult in today’s environment – unless of course, you are creating a brand consisting entirely of made-up words. It is estimated that there are 73.7 active trademarks worldwide and 355 million domain names in existence.
It goes without saying that the same brand can exist across different trademark classes, and branding and marketing professionals are not restricted to using names that have never been registered as trademarks. As an example, Delta faucets and Delta airlines are both well-known brands, but obviously, their trademarks are protected across very different classes. Although it is important to keep in mind that there is only one delta.com
Undoubtedly, these are complex issues best handled by trademark professionals. And before brand and marketing teams begin any meaningful work using a specific brand name, they must consult with legal to clear the name, register core domains and file for trademarks in countries where they plan to conduct business or anticipate infringement or abuse.
Identify Likely Conflicts
When legal receives a request to clear a mark from marketing or branding teams, they typically leverage online databases to quickly check for exact and close matches to existing trademarks. Using Whois lookup tools, they also check for the existence of registered domain names. Based on these initial findings, legal may advise branding and marketing teams that there appear to be significant conflicts and that they should proceed with an alternate name instead. If no obvious issues are identified, legal will then proceed with ordering a full clearance report.
Conduct Full Clearance Searches to Uncover Potential Issues
Trademark clearance reports provide comprehensive information and analysis across relevant trademark databases. These reports identify existing registered or pending trademarks that may pose a conflict with the proposed mark. Leveraging sophisticated algorithms, analysis takes into account visual, phonetic, and conceptual aspects to identify potential infringement. Clearance reports highlight potential risks enabling informed decisions about adopting and registering a new trademark.
Concurrent to ordering full clearance reports, legal may also consider anonymously registering exact-match domains in top TLDs (top-level domains), if they are available. This recommended step helps to ensure that relatively inexpensive exact-match domain names are secured, ahead of any potential squatters.
Even if a clearance report indicates that no significant conflicts exist for a particular class, marketing, and branding teams may decide not to pursue if the corresponding domain name is already in use and cannot be acquired. For some companies having an exact-match .com domain name is necessary. For others, using a variation of the word is acceptable, such as combining the brand name with the product type.
Selectively Register Marks and Domains
Working collaboratively with legal, marketing, and branding teams, decide whether to move forward with a new brand. Assuming the decision is made to proceed with the new brand, legal then works to obtain trademark registrations and corresponding domain name registrations, although in some companies domain registrations are handled by technical or web marketing teams.
Legal should work with marketing and branding teams to understand where the brand will be marketed and sold, and where abuse or infringement is likely to occur. This information may be used to drive trademark and domain name registration strategies.
Monitor for Use and Abuse
Once trademark applications are submitted and domains are registered, proactive decisions should be made regarding whether the new mark warrants trademark watching and/or brand monitoring services. Trademark watching services identify similar trademark applications in the trademark opposition period. A trademark opposition period is a specific time frame during which third parties can file an objection or opposition against the registration of a newly filed trademark application. This period allows individuals or entities to raise concerns about the registration of a trademark that they believe could potentially conflict with their own existing trademarks or rights.
Brand monitoring services attempt to identify issues of infringement and abuse occurring within domain names, and on websites, auction sites, marketplaces, and more. Remediation of identified issues may consist of sending demand letters, requesting removal of content under the DMCA, or requesting take-downs under terms of service for specific marketplaces or auction sites. It is not uncommon for brand owners to wait until significant issues arise before implementing a formal brand protection program.