Your Name Is Your Strongest Asset
Any business, product or service that evokes positive emotions and trust in us is invariably recognised by its name.
So, the name is the primary way we associate a brand. It’s therefore an important asset to prioritise protecting if you aspire to build a solid business.
Many inexperienced business owners don’t appreciate why the name they choose for their business is important, so they don’t always make an effective choice. And they avoid making changes to their name if they discover their name is too descriptive to register as a trademark.
Registering a trademark for the name as a word mark is the first step in protecting a name. But it’s only worth doing if you’re sure the name you’ve chosen is legally effective and available.
John Stuart, CEO of Quaker Oats for over 30 years, understood that the value of a business lies in its trademarks and brand when he said “If this company were to split up, I would give you the property, plant, and equipment, and I would take the brands and the trademarks—and I would fare better than you.”
As the name is an asset in its own right it can be separated from the business it represents. So, for example, WH Smith recently sold off its high street shops without the right to use the brand name. It kept the name for its stores in hospitals, stations and airports which were not included in the sale. The former high street branches of WH Smith are now branded as TG Jones.
Just as physical assets need to be properly cared for and maintained, so trademarks should be monitored and enforced on an ongoing basis to protect their exclusivity.
Trademarks need to be registered in each territory in which you trade so they involve different actions to protect on an ongoing basis depending on the jurisdiction.
For example, in the USA, the USPTO proactively prevents similar trademarks from being registered. So, the USPTO effectively monitors your trademark for you.
In the UK on the other hand, brand owners must oppose other trademark applicants because the UKIPO will not prevent a trademark applicant from registering the exact same name as you’ve registered for an identical business. Instead, trademark owners need to prevent confusingly similar trademarks from getting onto the register by opposing applications that conflict with their name.
It can be difficult for businesses to assess whether a potentially conflicting application needs to be opposed and whether they have a strong case.
That’s why we introduced our annual brand protection service so clients with registered trademarks can get advice when they are notified of a potentially conflicting application.
It’s also important to regularly review trademark registrations so new applications may be filed to reflect a business’ growing needs as it develops.
Trademarks are vulnerable to cancellation if they’re not used in the form in which they’re registered. Even if the mark is being correctly used it’s important to maintain good records so that evidence of use is available should the business get embroiled in legal proceedings. Even well-resourced companies like Apple and McDonald's have lost trademarks—such as "Think Different" and “Big Mac” - due to insufficient proof of use.
If you don’t have a monitoring service for your trademarks or haven’t registered your name as a word trademark, I’d recommend addressing the position as soon as possible.
