Ecommerce

5 Trademark Strategies for Your E-Commerce Business

A federally-registered trademark is a valuable asset to any e-commerce business.  Consider the following trademark strategies for your e-commerce business:

  1. Choose a strong mark from the start.
  2. Work with a trademark attorney to conduct a comprehensive trademark search.
  3. Register your trademark with the United States Patent and Trademark Office.
  4. Consider registering your trademark internationally.
  5. Continue to use your mark consistently to maintain control.

Start with a Strong Mark

Your trademark often represents the first interaction a person has with your brand.  If chosen well, it should help to set you apart from competitors, build customer loyalty, and protect against infringement. 

Because of its importance to your brand, the process to choose a strong mark, therefore, should be carefully thought out from the start.  Trademarks can be divided into four categories, based on strength:

  • Generic words depict a general product or service.  An example of this would be “Books” for an online business selling books.  Generic words and phrases, because of their wide use, cannot function as trademarks and will never obtain registration from the USPTO.
  • Descriptive trademarks simply describe a product or service in basic terms.  “Good Music” as the name of a music streaming site would be considered a descriptive mark.  The USPTO affords descriptive marks very little, if any, trademark protection.
  • Suggestive trademarks hint at the product or service being offered.  The well-known e-commerce business Instacart is an example of a suggestive trademark. 

    While suggestive marks can be protected, they often face more trademark disputes, as others may choose a similar language, like QuickCart or InstaShop.
  • Arbitrary trademarks use commonly used words that don’t represent the goods or services provided.  Amazon is an example of an arbitrary mark, as the products offered are not related to the rain forest the name represents. 

    These marks are stronger than the marks previously mentioned, but businesses must educate consumers about the goods or services offered while the brand is in its early stages.
  • Fanciful trademarks offer the strongest protection.  They are invented terms with no relation to the products or services provided. Rakuten and eBay are both fanciful trademarks. 

Before you fall in love with a name for your e-commerce business, be sure that it is strong enough to help you stand out from competitors.  For online businesses, it’s especially important to choose a name that is easy for customers to remember. 

Arbitrary and fanciful marks will provide the most protection, but they also require additional marketing and advertising to create customer recognition. 

Rakuten, for example, launched an extensive ad campaign on how to pronounce the business name.  You may also want to see if the domain name related to your mark is available before you begin the registration process.

Conduct a Comprehensive Trademark Search

Once you’ve selected a strong mark for your e-commerce business, you need to complete a comprehensive trademark search.  The purpose of the search is to determine whether your mark is already in use by another business or individual. 

It’s frustrating to learn that your mark may infringe on another business, but it’s best to learn this before you file your application and pay your fees, or worse, move forward with branding your business. 

To ensure that your trademark search reveals all potential trademark conflicts, it’s best to work with an experienced trademark attorney. 

Business owners and entrepreneurs often take a do-it-yourself approach to business, and while that has likely led to success in other areas, it’s not recommended for conducting a trademark search. 

Simple Google searches and DIY legal sites will typically only reveal exact matches to your mark.  Most trademark disputes, however, don’t arise from exact matches, but rather from any mark that may cause a likelihood of confusion in the marketplace. 

Fortunately, the search tools used by trademark attorneys are more sophisticated, revealing not only exact matches but confusingly similar matches as well. 

Register with the USPTO

After you’ve completed your trademark search, the next step in protecting your trademark is to register with the United States Patent and Trademark Office, or USPTO. 

While you will have some common law protections simply by using your mark, those protections are often not enough to protect e-commerce businesses. 

For example, common law trademark rights will only protect your business in the small geographic region where you are located. 

This may be sufficient for small, brick and mortar shops, but for e-commerce businesses that essentially live online, you may face challenges if a similar mark is used in another region where your customers are located. 

To get full trademark protection and the presumption of nationwide validity, you must register with the USPTO.

 Work with an experienced trademark attorney as you draft your application for the USPTO.  Many detailed legal decisions need to be made throughout the process, including the selection of international classes. 

The USPTO and many other trademark offices around the world use the Nice Agreement to categorize goods and services into 45 different classes.  Selecting too few classes may limit your ability to offer additional products in the future. 

Selecting too many classes, however, may result in your application being rejected.  Your attorney will work with you to determine which international classes provide the broadest trademark protection for your business.

Consider International Registration

In today’s global economy, many U.S. e-commerce businesses have reach outside the United States.  Unfortunately, the valuable protections provided by a U.S. registered trademark will not protect you in disputes in other countries. 

Whether you use a manufacturer or distributor overseas or you sell products outside the U.S., you should consider international trademark registration. 

The process to register your trademark in other countries is usually not as overwhelming as it sounds.  Think about where you are currently doing business, and where you plan to do business in the future. 

Once you’ve decided where to register, you have two options.  The first is to register directly with each country’s trademark office.  This is often the best choice if you plan to register in only a few other countries. 

For businesses that plan to register in many countries, the best option may be the Madrid Protocol.  This international treaty allows applicants to file one application, in their home language, which can then be sent to over 90 member countries. 

While the application process is streamlined, using the Madrid Protocol does not guarantee the approval of your application.  That decision is made on a country-by-country basis.

Use the Trademark Consistently

The protections provided by a registered trademark never expire, as long as you continue to use the mark and meet renewal deadlines.  It’s important to use the trademark consistently, exactly as it appears in your trademark application with the USPTO. 

Many e-commerce businesses find it helpful to create trademark use guidelines.  These guidelines would provide information to employees, vendors, and distributors about how and where the trademark should be used. 

If an authorized user incorrectly uses your trademark, or if you find that your mark is being used by others without your permission, it’s important to take action immediately. 

Allowing your mark to be used improperly could confuse loyal customers or hurt your brand’s reputation.  In cases of potential infringement, a cease-and-desist letter is often all that is needed. 

In some situations, however, more formal legal action will be required.  Work with your attorney to determine the best way to handle possible infringement. 

E-Commerce Trademark Strategies

Whether you are just beginning to set up your website or you’ve been in business for months, now is the time to protect your e-commerce business with a registered trademark. 

Begin by choosing a strong mark and conduct a search to be sure that your trademark isn’t already in use.  Then, register your mark by submitting an application to the USPTO. 

Because online businesses could have customers around the world, you may also want to consider international trademark registration. 

Once your mark has been registered, use it consistently and meet renewal deadlines to have trademark protections that never expire.  Contact an experienced trademark attorney today to begin the trademark registration process

Author Bio:

Attorney Josh Gerben is the founder of Gerben Law Firm, PLLC, a nationwide intellectual property law firm that has secured over 5,000 trademarks for clients since 2008. Featured in a variety of national news outlets including FOX News, NPR and The Wall Street Journal, Josh Gerben was named one of 2018’s Top 10 trademark filers in the US by World Trademark Review.

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