January, 18th, 2019 at 10:21 am
By Wesley W. Whitmyer, Jr. Read Part 1 I have been asked this question hundreds of times. You can probably guess that the person doing the asking has just been accused of patent infringement. [Read More…]
January, 10th, 2018
Several years ago I started my own patent and trademark law firm. To brand the firm, I applied lessons learned from clients of all sizes in nearly 30 years of practicing trademark law. I also paid particular attention to how the Internet has changed the game of brand identity. This article imparts actionable knowledge about brand identity that can help your business succeed using the example of my law firm, Whitmyer IP Group.
Use Your Logo and Internet Name as a Trademark
A trademark is only as good as its use. Having selected and protected our logotype, we used it on our letterhead, envelopes, folders, business cards, notepads and other articles. We also use our logo and logotype electronically in our email signatures, newsletter, homepage banner and footer, and mobile site. Several examples of electronic use are shown adjacent.
As trademark lawyers, we recognize that “group” is not distinctive and so its inclusion in our corporate and Internet name is of little trademark value. For this reason, we have chosen to highlight “WHIP” in print when referring to WHIPgroup. We have also recently registered the additional alternate domain names whipgroup.pro, whipgroup.cloud, whipgroup.law, whip.law and whip.group. These and other alternate domain names point to whipgroup.com on the Internet so people, including ourselves, can use them if they wish to reach our homepage.
Register Trademarks for Your Logo and Internet Name
Having selected a brand identity logo and Internet name, the next step is to trademark your selection in order both to preserve your continuing right to use your selections, and to ward off any competitors that might wish to use confusingly similar terms for their branding.
Once our brand identity and logo was finalized, we set out to obtain appropriate trademark registrations. First, we filed three priority applications in the US for: Whitmyer IP Group and Design, IP and Design, and WHIPGROUP. The two design marks cover our logo and logotype, and the word mark covers our Internet name. The US registrations which matured from these original applications are shown adjacent.
The “and Design” portion of a trademark description indicates that a mark includes a design element in addition to any letters/characters. In the case of our registrations, they both include cloud art. Our corporate font was included in our Whitmyer IP Group and Design mark. While our corporate color was not included in either of the design trademark registrations, since these marks are used in black and white as well as our corporate blue. The trademark registration for WHIPGROUP does not include any design element and is shown in black, Times Roman font with all caps to indicate that any font or color is possible.
Within the six-month priority period of the filing dates of the applications leading to our three US trademark registrations, we also filed three so-called Madrid international trademark applications at WIPO. These applications were substantially identical to the US applications and have each now also been registered with the World Intellectual Property Organization.
Police Your Internet Name on the Internet
Once trademark registrations are in place, setting up an appropriate watch and policing program provides early notice of any third party’s use of a confusingly similar term or logo. This is an essential step in building the exclusivity owing to your trademark registrations. In addition to monitoring newly filed applications to register, trademark owners should also monitor Internet uses and regularly review AdWords, blogs, online registries and marketplaces, and social media feeds. Early identification of a competitor’s intent and swift action to deter them is the key to successful and cost-effective policing.
Ultimately WHIPgroup’s future brand strategy will follow our business. This includes decisions about officially shortening our corporate moniker, migrating our Internet presence to one of our alternate domain names, updating our logo, font or corporate color, or taking a decision to enforce our registration rights. As these things occur, or as aspects of our brand identity or business either change or become more ingrained, we will file new trademark applications as necessary.
If this seems like an excessive amount of effort at selection and protection of a branding program, it shouldn’t. We are committed to solving IP problems in a creative and cost-effective manner, and we followed the advice we give all our clients. At WHIPgroup, our clients come to us for our superior technical and legal know-how and we leverage our skills with advanced cloud-based technology to obtain quality results.
WHIPgroup is leading counsel for U.S. and international technology companies.
We specialize in patent and trademark law.
© 2018 Whitmyer IP Group, Stamford, Connecticut.