Once a business has gone through the trouble of securing protection for its brand by clearing and registering its mark, it is essential that such business “act” like a trademark owner. Trademarks warrant protection because they indicated the source or origin of the goods or services being held out to the public. Thus, trademarks provide the consistency of association in the public mind and, therefore, speak to reputation, credibility, and a forecast of reliability. In this light, paying attention to how you (and others) are using your mark is not only relevant to the value of your brand, but also essential to maintaining your exclusive rights.
Nearly anything can function as a trademark or service mark: names, words, logos, images, colors, sounds, and even scents can all serve as “designators” as to the source or origin of goods and services. Once a business begins providing goods or services under a distinctive trademark, it can claim exclusivity to use of that mark in its particular field. With this benefit of exclusivity, however, comes the obligation to maintain control over how, when, where, and by whom the mark is used. In fact, a trademark owner’s duty to “police” the use of its mark is the cornerstone of maintaining exclusive trademark rights, and thus the integrity of its reputation.
For instance, the service mark PROJECT HOPE represents the source of services delivered from the well-known U.S. foundation devoted to eradicating infectious diseases in developing countries. When people see the mark, there is an expectation as to the source and credibility represented by the mark. However, there are several ways in which unauthorized use by third parties could turn this into a “runaway” mark that over time no longer indicates the source of the services provided under the PROJECT HOPE mark.
Even more common, however, is when advocates and allies of the organization decide to “help” further an organization’s cause by using the mark on their websites or materials. These third parties often start out with the best intentions, but eventually use of the mark goes awry. Below are just a few examples.
The advocate who places “PROJECT HOPE” prominently on its website to demonstrate that it provides similar advocacy services;
A supporting non-profit organization that places the PROJECT HOPE mark on its website next to its own trademark or service mark, giving an impression that there is an association or partnership between the two organizations that does not in fact exist; or
A new organization, inspired by PROJECT HOPE, begins providing the same advocacy and humanitarian services by using the mark PROJECT HOPEFULNESS.
However well-meaning or innocuous these intentions to promote the cause of curing disease in developing countries, each of these examples constitute misuse and misappropriation of the PROJECT HOPE mark. At first glance, this might seem helpful because it disseminates the mark, which is particularly attractive to new businesses. But third-party uses of the mark are carried out by people outside of the control of this organization, who are not part of the decision-making, goal setting, and overall mission of the business or organization itself. In the end, unfettered use – no matter how helpful in increasing the public profile of the organization – weakens the trademark and the effectiveness of the organization overall.
In fact, if third-party misuse happens too often, the organization that rightfully owns the trademark can lose its exclusive trademark rights altogether. This loss of rights often arises when the trademark owner does decide to enforce its rights against a particularly egregious infringer and that infringer defends itself by claiming that the organization has not properly controlled third-party use of its mark and thus has abandoned its right of exclusivity. This consequence makes sense if you think about the function of a trademark as a source designator. A trademark owner cannot have it both ways: the benefit of exclusivity requires actively policing against confusion in the public mind as to who is providing the service under the mark. These third-party abandonment claims can be a very effective “latches” defense from a competitor who wants to use the goodwill associated with the mark in question.
So, how does a business avoid these trademark and branding pitfalls? Think of it as the “Three Ps of Trademark” – Protection, Policing, and Permissions.
PROTECTION: Protect the trademark through registration with the United States Patent and Trademark Office to perfect the business’ trademark rights.
POLICING: Police the trademark against unauthorized third-party uses that infringe or dilute the strength of the trademark as a source designator.
PERMISSIONS: Execute written trademark licenses for all third-party uses. Such licenses can be a simple one-page form or detailed complex agreement. A business or organization can permit any and all third parties to use the mark as it sees fit, provided that those uses are authorized, controlled, and supervised through written licenses, usage guidelines, terms of online use (if a website), and clear and predictable ownership and licensing rights when partnering with other organizations.
On the last point, a business or organization might want to use its trademark to further its mission, such as with corporate sponsorship, licensing, and other types of promotional partnering. These types of controlled, intentional public activities can elevate the status of a business or organization both financially and reputationally. The strength of an organization’s trademark rights directly affects its ability to protect its public reputation and the strength of its brand.
Melissa Cross