A company's name can be its most valuable asset. This is especially true for a company that provides professional services to clients, such as a PR firm. Without it, a company's brand may be tarnished by other organizations who opt to select confusingly similar names. Logos (such as McDonald's golden arches or Taylor's red “T” in a circle) and taglines (such as Nike's “Just do it” or Cramer-Krasselt's “Insights that Change the Conversation”) are also federally registered.
It is imperative for savvy PR firms to strengthen their overall brand through use of their trademarks. Here are four key considerations regarding the adoption and maintenance of a trademark that apply equally whether a PR firm is selecting a name, logo, or tagline for itself or one of its clients' brands, programs or promotions:
• Is the coast clear? First, determine whether the name you want is available – not just as the corporate name with the relevant secretary of state, but also the name as a trademark. A skilled trademark attorney can determine the availability of a mark for use and registration. Failing to conduct a comprehensive trademark search may be considered “bad faith” in a trademark infringement action and can subject a company to monetary damages.
• Make reservations. Once you know the desired name is available, you may commence use. Trademark rights are based on actual use. Although a federal registration is not required, it is usually recommended. In a dispute with another company, a registration helps establish nationwide rights, gives automatic access to federal courts, and possibly monetary awards. Additionally, once a mark registers, the ® notation may used, putting the public on notice that you own the name and mark. Even where the trademark is not yet in use, an application may be filed in the United State Patent and Trademark Office based on proposed use.
Quickly filing an application can be highly beneficial, as the application filing date can establish your rights over others who may later apply to register or begin using the same or similar mark. In addition to securing a federal trademark registration, companies should also purchase relevant domain names and create social networking profiles and handles.
• Keep it proper. When used properly, trademark rights continue with use. Trademarks must be used consistently as a proper adjective modifying a noun. Never pluralize trademarks, use trademarks as a verb or noun, or make trademarks possessive. Failure to use a mark properly may result in the loss of trademark rights. The nouns “escalator” and “aspirin” were once registered trademarks, until they were misused and became generic. Don't let your trademarks suffer the same fate.
• Seek and destroy. If you discover others misusing your mark, you have a duty to enforce your trademark rights. You are not required to take legal action against every company using a similar name, but failure to actively oversee your mark can result in a loss of rights. Enforcement may involve a simple cease and desist letter. If that does not stop the infringing activity, an administrative proceeding or a lawsuit may be appropriate. In all instances, consider the extent that your trademark is threatened and the time and cost associated with each option when creating your strategy.
Shakespeare's famously asked “What's in a name?” The answer: everything. Clients increasingly ask their PR firm to select names for client programs and pay attention to how careful its PR agency is in protecting its names and trademarks for the PR firm's own account. Thus, similar to a PR agency's logo and tagline, its name is its calling card. Careful selection, maintenance, and protection will keep it a valued asset.
Michael Lasky is a senior partner at the law firm of Davis & Gilbert LLP, where he heads the PR practice group and co-chairs the litigation department. He can be reached at firstname.lastname@example.org.