Guide to Brand Protection

Every brand protection strategy should begin with the registration of trademarks with the USPTO and, if relevant, foreign IP offices because registration allows you to take action. A well-developed IP strategy gives growing businesses multiple avenues through which they can expand product portfolios and find synergies across multiple activities. Importantly, having an IP strategy in place can reduce an emerging business’s exposure to litigation risk. For example, as startups begin to show growth and take market share from competitors incumbents in the market will look for ways to stifle this growth, including bringing lawsuits.²⁴ Having a strong IP portfolio will provide startups with a way to hedge against the risk of litigation, while giving them opportunities to deter litigation through countersuits.²⁵  The steps to register your trademarks with the USPTO are outlined in the tool kit titled Registering your Trademarks: A Step-by-Step Guide.

Once you have registered your trademark with the USPTO, you will need to develop a broader trademark registration strategy. Trademark protections exist within jurisdictional boundaries; a U.S. trademark registration does not grant you protections in other countries. Similarly, a state-level registration in Michigan does not offer you protections under California law. Because the costs of registration grow with each added jurisdiction, it is important to be strategic about where you will register your marks. Identifying the state-level and international registrations that are most important to protecting your brand now should be your principle concern at this step. Following this, draft a list of places where you are likely to do business or into which you would like to expand your business in the future. A well-crafted IP strategy includes anticipating the markets in which you plan to operate and how best to secure IP protections in those areas.²⁶

You must be poised to secure your trademark rights in these places as soon as possible so that you will have protections the moment you enter that market. We provide you with a process for developing this strategy in the tool kit titled The Three M’s of Trademark Registration: A Practical Guide to Developing and Maintaining a Trademark Registration Strategy. Following the drafting of this strategy, you can refer back to the tool kit on Registering your Trademarks: A Step-by-Step Guide for information about state-level and international registration processes.

Businesses cannot ignore the threat of product counterfeiting that exists on the Internet. Several major e-commerce platforms have become active in the fight against counterfeiters and offer SMEs unique programs to record their marks and take action against infringing goods being sold online. The section titled E-Commerce Resources outlines a number of different platform-based programs that you can take advantage of when building out your e-commerce focused brand protection strategy.

At some point, depending upon the nature of your business and how prevalent your online counterfeiting problem has become, you may want to enlist the help of a third-party service provider that specializes in online enforcement. There are a number of firms that provide online monitoring and enforcement services to brand owners. The cost of these services varies according to the extent of the provider’s involvement, the type of activities they are conducting, the amount of data that you request from them, etc. The A-CAPP Center does not endorse any particular service provider or service so we do not detail the firms and their offerings here. However, in one of the following steps – Step 5 – we discuss how you can gain valuable information about service providers and attorneys from other companies that have experience developing brand protection strategies.

Another essential component of e-commerce focused brand protection activities is developing an efficient returned goods process that allows you to evaluate any and all products returned to you as defective. Customers who have purchased a counterfeit item that failed may return the item to you believing that the item is legitimate, yet faulty. Examining these items can tell you much about the nature of the counterfeits being sold and may give you clues about the source of the goods. Yet, an efficient returned goods process will provide avenues for interaction with your customers, whereby you may be able to gain valuable information about where and how the customer purchased the item. This information may help you to identify counterfeiting problems that you have yet to detect. Similarly, providing a way for customers to report suspected counterfeit items directly to you, either via phone, email or online submission, is an excellent way to gather data about counterfeits you may not have previously identified. Additionally, these reporting channels allow you to directly interact with your customers so that you can quickly respond to problems, address their concerns, and put legitimate products in their hands.

In the toolkit titled Registering your Trademarks: A Step-by-Step Guide, we describe the process of recording your trademarks with customs agencies. Trademark recordation with customs agencies is an essential part of enlisting the assistance of law enforcement agencies in the protection of your brand. Yet, you should view recordation as the initial step to engagement with U.S. Customs and Border Protection, one that is followed by training and interaction. U.S. CBP invites trademark holders to assist them in identifying counterfeit goods coming into the country by providing a product identification guide as an aid to distinguishing legitimate from illegitimate goods. Additionally, you can visit ports of entry personally and provide in-person training to CBP agents or set up live online trainings that will help customs agents to recognize your trademarks. Additional information about these engagement opportunities can be found here:

• https://www.cbp.gov/document/guidance/ipr-product-id-training-guide
• https://www.cbp.gov/contact/cbp-hq/office-field-operations-contact-numbers
• https://www.cbp.gov/trade/priority-issues/ipr/webinar

When you engage with CBP, be sure to provide them with up-to-date contact information as it is essential that they be able to reach you in a timely fashion should potentially infringing goods be identified.

Relatedly, you should make inroads with the National Intellectual Property Rights Coordination Center, which is the hub for IP enforcement in the U.S. The IPR Center can connect you to federal and some local law enforcement partners, offer guidance on brand protection activities that involve law enforcement agencies, and assist with the trademark recordation and CBP training processes. They also have an IP Protect Program designed specifically to help SMEs.

While most of the anti-counterfeiting activities are carried out by federal law enforcement agencies, it is still wise to investigate which agencies within your state have responsibility for investigating and addressing counterfeiting issues. The state-level trademark recordation information provided to you through this guide and the A-CAPP Center are an excellent starting point to identifying which department within your state government to contact. Additionally, contacting your state’s business development office and the entity handling exporting and trade are key steps to identifying your state-level resources.

You are not the only company in a fight against counterfeiters. Firms large and small face the threat of counterfeiting each day, and over the years we have seen a substantial amount of collaboration between firms, even those who are competitors in the marketplace. Counterfeiters are the common enemy. Luckily, as an SME you can collaborate with other firms in a brand protection partnership that will at the very least offer you insight and information that you can use to tackle counterfeiters and may at best provide you assistance in addressing your specific counterfeiting issues. In the section Other Brand Protection Resources, you will find information about industry associations and groups dedicated to combatting counterfeiting. Through this groups you will be able to meet with other companies and learn about how they have handled counterfeiters, whom they see as trusted service providers, and how they partner with other firms, e-commerce platforms and law enforcement agencies in this fight. Take advantage of opportunities to meet and interact with other companies, such as those afforded by attending the A-CAPP Center’s events, such as A Brand’s New World or the annual conferences hosted by the International Anti-Counterfeiting Coalition (IACC) or International Trademark Association (INTA). We trust that you will find the attendees as willing to share information and resources as they are eager to hear about your issues and offer guidance and suggestions.

Brand protection relationships can also come within your company’s supply and distribution relationships. While it is true that the businesses with which you partner have no responsibility to protect your intellectual property, you may find that they are very eager to assist you in your efforts. Importantly, you must remember that it is your responsibility to protect your IP – no one else has a higher duty to do so. You, as the property rights holder, have the responsibility to protect your intellectual property, even after your property has been filed as a patent, copyright or trademark right. This means that it is incumbent upon you to (1) file from appropriate intellectual property rights, (2) institute means to protect those rights through developing an intellectual property protection strategy, and (3) to ensure that any companies that do work on your behalf abide by your IP rights. Once this is done, look to engage with your upstream and downstream partners, including e-commerce platforms, in a way that makes it clear that you value them as a business partner who have the ability to help protect your intellectual property while it is in their hands. Partners in your supply and distribution chain can help to protect your IP by working to keep counterfeiters from intermingling fake goods in with your legitimate goods, thereby using legitimate products as a cover for their counterfeit products. Distributors can be your eyes and ears on the street, interacting with customers and other distribution partners to quickly identify when counterfeit goods appear in the marketplace. If you are a supplier or distributor for a larger firm, have discussions with them about how you might be able to integrate your brand protection activities with theirs, which can enhance their own anti-counterfeiting activities and reduce the brand protection burden that you have to carry.²⁷

The most important reasons that you need to consider taking your brand protection strategy “international” are the Internet, and the growth of global manufacturing paired with a globally-connected supply chain. Even if you are not selling into foreign countries at this point, counterfeits of your products almost certainly originate from outside of the U.S. It may be the case that your own business is sourcing components or manufactured parts from outside of the country. Additionally, the Internet and the rise of e-commerce have allowed counterfeiters exposure to brands that had not previously had an international presence, as well as the ability to bring counterfeit products to consumers around the globe. It may be that a counterfeiter has stolen a company’s trademarks and established a market solely within a foreign country. Alternatively, counterfeiters are notorious for offering cheap fakes on e-commerce platforms that the legitimate brand does not utilize. Counterfeiters do not have to work within the U.S. in order to steal your intellectual property, and you do not have to operate in foreign countries to fight your counterfeiting problems. Developing an international brand protection strategy begins with ensuring that you have a strategy to register your trademarks in other countries, something covered in the toolkit Registering your Trademarks: A Step-by-Step Guide. Additionally, make plans to record your trademarks in these countries and if necessary secure legal counsel to navigate the intellectual property rights environment in foreign countries and fill the proper paperwork necessary to initiate action once infringing goods are found. Developing an international strategy can be a complex process and it is difficult to know where to begin. Because of this, SMEs should take the time to discuss their concerns and questions with peer firms, industry associations, and law enforcement partners here in the U.S. Importantly, take the time to search out recommendations for in-country legal counsel and spend time talking with outside attorneys about your specific situation and strategy. Again, there is no one-size-fits-all solution to this issue, so you should leverage all the resources that you have to identify where your risk exposure may exist and how best to mitigate that risk in an efficient and economically viable way.

In the toolkit Other Brand Protection Resources, we introduce you to a range of resources available to SMEs, and larger firms, to assist with brand protection activities. The key advantage that SMEs have is that many groups (for example, law enforcement agencies, e-commerce platforms, and industry associations) are committed to providing free or low-cost resources to SMEs looking to enhance their brand protection activities. Becoming familiar with the wide range of resources available to your business will help you to develop a comprehensive and effective brand protection strategy that leverages all of the resources available to you. Reach out and ask for assistance when you need it and that you become proactive and forward-looking in your brand protection/anti-counterfeiting strategy. The resources at your disposal can assist you in identifying the right partners, an ideal strategy, and the most efficient and effective ways to implement your brand protection plans.
 
While there is no one-size-fits-all approach to building a brand protection strategy, the steps we have laid out above are an ideal way to craft an approach that should work for your business. Remember, this all starts with registering your trademarks, which involves executing a trademark registration strategy. Once this is complete, you can begin to reach out to e-commerce platforms, law enforcement agencies and other partners in this space (peer firms, industry associations, etc.) for help developing and implementing your larger strategy. Finally, you should develop a strategy to tackle the international market – finding effective legal counsel is key here – and that you become familiar with the host of resources available to you.

Having completed the trademark search step and addressed any potential conflicts with existing trademarks, you are ready to register your unique trademarks with the USPTO. If the results of your trademark search come back clear, meaning that you do not identify any identical or similar names, logos or marks, this does not guarantee that you are free to use your desired name, logo or mark in commerce. You should first register your mark with the USPTO, which will ensure your ability to obtain legal protections for your intellectual property. 

Legal Requirements for Trademark Acceptance.

Any individual can file a trademark application with the USPTO, but the mark must meet certain legal requirements for it to be accepted and registered as a federally recognized trademark.³⁴

The USPTO offers two different trademark application types: a “use-in-commerce” application and an “intent-to-use” application.⁴¹ If the mark has already been used in commerce, a “use-in-commerce” application should be filed.⁴² Under this application the USPTO requires a “specimen” to be submitted to show how the mark is being used in commerce. For a mark connected to services, a specimen should show the mark used in advertising the service (e.g., photographs of a business sign, a brochure, website, or business card).⁴³ Alternatively, an “intent-to-use” application can be filed by those that have not yet begun using the mark in commerce.⁴⁴ However, in “intent-to-use” applications, the mark will not be federally registered with the USPTO until the mark holder files an additional form with the USPTO called the “Statement of Use” that tells the USPTO the date the mark holder started to actually use the mark.⁴⁵ This form includes a filing fee per class of goods/services, the date of first use of the mark anywhere and the date of first use of the mark in commerce, and one specimen showing how the mark holder is using the mark in commerce for each class of goods/services.⁴⁶  

!!!IMPORTANT!!!

You will not be able to receive a valid trademark registration from the USPTO until you actually begin using the mark in commerce through the advertisement, sale or distribution of product.

SMEs have the ability to complete the trademark search and filing processes outlined in these first two steps on their own, without the assistance of legal counsel. However, for some businesses, it may be best to seek the services of a qualified attorney⁴⁷. Trademark applications submitted by an attorney on behalf of a client were 18% more likely to be accepted than applications submitted without the assistance of legal counsel.

Many intellectual property law firms offer a trademark registration package where the law firm will conduct a comprehensive trademark search, draft the trademark application in coordination with the business, and then file the application with the USPTO.⁴⁸ These packages typically include an extensive trademark search of the USPTO database, state registered trademarks, trademarks that are not registered but have common law protection, domain names, and various proprietary databases compiled by data amalgamation companies.⁴⁹ 

Once you have completed USPTO trademark registration, you should begin exploring your registration options for other jurisdictions. While registration with the USPTO gives a business the broadest coverage in this country, you may also choose to file your trademarks with the state(s) in which you operate.

There is no centralized system that allows you to file across all of the states in the U.S., so state-level trademark registration can be a tedious process, depending upon the number of states in which you plan to file. The process to register your marks at the state level will vary by state so be sure to pay attention to the specific requirements of each jurisdiction. Links to each state’s trademark registration website can be found by visiting the A-CAPP Center’s website (include link address here as hyperlink). To highlight some of the differences and similarities that exist across the states, and to give you an idea of the type of information that you will need, we detail the process in a handful of states below.

Beyond the state level, you should also consider the need to register your name, logos and marks in other countries, particularly the countries in which you plan to do business. As you go about making “planned choices about which parts of the market to focus upon and how to compete within that target market”, keep in mind the need to protect your IP.^{50 51}

Using the Madrid System for International Trademark Registrations

When looked at globally, the wide variety in international trademark protections can seem like a patchwork system of national laws and international trademark registries,⁵² yet there are certain systems that can make the registration process a bit more efficient.

Under the Madrid system, trademark owners can obtain trademark protections in a number of different countries by filing a single application through a centralized international registration system.⁵³ A person is eligible to use the Madrid System if the applicant either lives in, operates a business within, or is a citizen of one of the 122 countries covered by the System’s 106 members.⁵⁴ The United States is one of the System’s member countries, so your business likely meets this qualification. In addition, the System requires trademarks to be registered in the country of origin before it can receive international registration. Completing Step Two by registering your marks with the USPTO satisfies this requirement.

The cost of an international trademark registration includes the basic fee plus additional costs depending on where the applicant desires to protect their mark and how many classes of goods and services will be covered by the registration.⁵⁵

While the fees associated with the Madrid System are higher than those charged by the USPTO, they are not prohibitively expensive. For example, a business based in the US filing a new application for a mark applicable to one category, where specific colors used in the mark are not being protected, would have a basic fee of $653.00. If you wanted this information sent to three countries – China, Russia and Vietnam – this would cost an additional $510.00, for a grand total of $1,163.00. This fee would cover your trademark applications for the countries selected, however, it does not guarantee trademark protections. Each country will determine whether to accept your application or to send it back; just because you have a mark registered with the USPTO does not mean that your mark will not have issues gaining registration with other countries.

Because the Madrid System is widely recognized around the world, most of the major countries into which a company would reasonably expect to expand are party to the System, including Germany, France, China, Russia, and Canada.⁵⁶ It is also important to note that because international registration relies entirely on domestic registration, should you cancel or abandon your registered marks within the first five years of submitting an international application, all foreign applications and any registrations based on the national registration will be automatically cancelled.⁵⁷

Most firms will want to register their trademarks in China, given the large volume of counterfeit goods that originate from the country. Follow the link to access a Guide to Trademark Protection in China, which was developed by the European Union and provides valuable information for brand owners anywhere in the world.

European Union-Specific Trademark Registrations

If you plan to focus your global efforts within European Union countries there is a multi-tiered system that allows you to choose your desired level of protection.⁵⁸ Once you have secured registration of a trademark through the USPTO, determine what you think the scope of your European market will be. Will you operate/sell in only one country? A specific region? Or multiple regions, possibly across the entire EU? Think broadly. Once you have selected your anticipated scope, you can determine which of the following three approaches best suits your needs:

As a trademark holder one of the steps that you can take to protect your brand and assist in the fight against counterfeiters is to record your trademarks with customs agencies. Customs agents around the globe are tasked with ensuring that only legitimate products enter into their countries. In addition to dealing with intellectual property rights infringements, customs officers are often times involved in stopping the flows of illegal guns and drugs across international borders, as well as stopping crimes like human trafficking. You, as a brand owner, can assist their efforts by providing customs organizations with records of your trademarks. This helps to facilitate the seizure of infringing goods at the border before they reach marketplaces or consumers.

US Customs and Border Protection

European Union Customs

Through the Madrid Protocol U.S. businesses are able to gain broad protections for the intellectual property throughout the European Union. For specific information about trademark and other IP rights within the EU, please see the USPTO’s EU IPR Toolkit.

Once your trademark rights have been established in the EU, you should visit the IP Enforcement Portal for detailed information about recordation, sharing information about your trademarks with customs agencies, and filing an Application for Action (AFA), which is the official process to request that customs take action against infringing goods.

Spend time understanding the resources available to you within the EU once you have registered your trademarks.

Chinese General Administration of Customs (GACC)

U.S. trademark holders that have registered their marks in China can record their marks with the GACC as a way to gain enhanced trademark protections. The advantage of registering your marks in China and then recording them with the GACC is that Chinese customs is active in examining goods coming into the country as well as those leaving the country. This means that if a counterfeiter is manufacturing products in China that bear your marks, GACC may be able to stop those goods from leaving the country IF you have recorded your trademarks and the goods are seized during export.

For additional information regarding trademark protections in China, review the USPTO’s China IPR Toolkit.

Canadian Border Services Agency

Canada is our second largest trading partner and more than $612 billion in commercial goods traverse U.S.-Canadian border crossings each year. Counterfeiters have often used Canada as an entry point into the U.S. in an attempt to avoid U.S. Customs and Border Protection. In response to the proliferation of product counterfeiting, the Canadian Customs and Border Services Agency (CBSA) has instituted a program that allows rights holder to file a “Request for Assistance” (RFA) application, which will help the CBSA to identify potentially infringing goods. Once identified, the CBSA will seize the goods, contact the trademark holder, and provide details and information necessary to pursue civil litigation against appropriate parties.