Sebastian Landivar Bolivia

Preparing a trademark strategy: 5 considerations for start-ups

Posted by: Sebastian Landivar
Practice Area: Trademark    Country: Bolivia    Publish Date: 30-Jun-2022

Preparing a trademark strategy: 5 considerations for start-ups

Most entrepreneurs are clear that brands are good for business. However, many overlook the importance of having a brand strategy. Simply put, a brand can be a unique combination of letters, words, sounds, designs or other elements that distinguish one company's products or services from those of another. Over time, trademarks can acquire significant goodwill and reputation and become valuable marketing and advertising tools. Incorporating trademarks into your brand development process from the outset can bring significant benefits to your business. The following are key considerations in formulating your brand strategy.

1. Prioritise your most valuable brands

Many companies employ multiple brands in their product and service offerings. For example, you may operate your business under one name and logo, sell a variety of different products, each with its own name and logo, and run a series of advertising campaigns with catchy slogans.

Given the value that trademarks can add to a business, you might be tempted to seek trademark protection for every word, logo and slogan in your marketing portfolio. However, obtaining and enforcing trademarks can be costly. As a result, it often does not make business sense for companies (especially those in their early stages) to apply for registration of all trademarks in their entirety. Instead, priority should be given to those marks that provide the greatest value. For example, company names and iconic marks are more important than slogans used as part of short-term advertising campaigns or product names that are part of limited duration offers.

It is also important to remember that trademarks can be registered at any time before, during or after product launch. It is therefore possible to obtain trademark protection after a trademark has been commercially successful.

2. Consider future business objectives

Your trademark strategy should recognise that your brand will develop and potentially expand over time. When filing a trademark application, it is important to consider not only the goods or services that your company currently offers, but also those that you can reasonably foresee it offering in the future. When preparing your application, keep in mind that a trademark application must list the specific goods or services for which you are seeking protection. Once you file your trade mark application with a particular list of goods and services, you cannot later amend the application to add goods or services broader than those included in the original application. For example, if you file a trademark application for clothing today and your company decides to develop a line of jewellery next year, you cannot later amend your trademark application to include jewellery. You would need to file a new application for the additional goods.

3. Identify key markets

Trademark rights are country-specific. A trademark application or registration in one country does not give you rights in another. To ensure the availability of the trademark, you should consider applying for protection not only in the countries where you currently offer goods or services, but also in those where you plan to expand in the future. Otherwise, you may find that your trademark is not available in key markets, forcing your company to launch under a different trademark and, in turn, losing any valuable pre-existing goodwill.

4.  Undertake an early brand search

Incorporating trademark searches into the brand development process at an early stage ensures that the trademarks of interest are available for use and registration.

Trademark searches should be undertaken as early as possible and before significant investments are made in launching, advertising and promoting new brands. While the initial cost of a trademark search may seem high for companies with limited resources, it is relatively inexpensive compared to the costs of having to rebrand once a product has been launched or promoted, not to mention the costs of defending a potential trademark infringement suit.

While it is possible to conduct your own preliminary search at IP Office's databases, these simple searches typically only capture marks that are identical (or virtually identical) to your mark and may not identify potentially relevant and problematic marks. For example, marks that are spelled slightly differently (e.g., LYFE and LIFE), but are identical in sound or in their meaning, may not be captured by such a search.  Therefore, it is advisable to seek the help of an experienced trademark professional to conduct a trademark search.

5. Secure other key assets

In addition to trademark availability searches, an effective trademark strategy should also consider whether corresponding key assets, such as domain names and social media names, are available. Securing the corresponding domain names and social media usernames will not only complement your brand protection strategy, but also prevent potential infringers and squatters from acquiring them first.

A well thought-out branding strategy adds value and prevents misuse of your brand by others. Keeping these considerations in mind when formulating your brand strategy will help you build a powerful brand that fits your current and future business objectives.

Invite Friends/Associates to View this Newsletter
Your Name:
E-mail Address(es)
(one email per line):