Collins | The Value Of Trademarks In This Digital Age

What do NBCUniversal, Kylie Jenner, Amazon and Take-Two Interactive have in common? One answer is that each has an extensive, and valuable, trademark portfolio.

A trademark is something that identifies and distinguishes one source of goods or services from another. Trademarks apply to things such as logos, brand names, identifying phrases and, in some cases, colors and smells. Trademarks differ from copyrights, which protect specific creative works. Additionally, while copyrights expire after a specified time period, trademarks do not expire.

In a world that is becoming increasingly digital, a trademark can be one of the most valuable things a company owns. It is what helps a customer or consumer identify the company behind the product. What do you think of when you hear a distinctive three-tone chime? It’s NBC. Which search engine is identified by a blue, red, yellow and green G? That’s Google. Which social media company has trademarked “FB”? Facebook has.

Back in the day, that is before 1989, companies had to be able to prove that they were using the trademark before applying for a federal trademark registration. That is known as a use-based registration. That all changed when Congress enacted the Trademark Law Revision Act of 1988. This law gave companies the right to apply for a trademark before launching and marketing the product. Such an application is called an intent-to-use or ITU.

For media companies, attorney Ronnie Raju says the time to apply for trademark registration for a “new podcast, radio interview show, video game, online magazine or mobile app” may be when the product is still in the development stage. She shares her thoughts and some of the legal considerations behind them in an article for MFM’s member magazine, The Financial Manager.

Why File An Intent-To-Use (ITU) Application

Raju has two reasons behind her support for ITU applications. The first is that such an application will allow the company to confirm that the trademark it seeks is available for its use. The second is that having the application before the product launches gives the company some assurance that another company or person will not be able to use a similar trademark and confuse consumers. A company does not want to invest resources in developing a product and related marketing strategies only to find that someone else has the desired trademark. It’s not a theoretical concern.

When Kylie Jenner applied for a trademark using her young daughter’s name, she found that a New Orleans clothing company already had the rights to “Stormi Couture.” The United States Patent and Trademark Office (USPTO) decided that Jenner’s request for “Stormi World” was too similar to the already granted trademark.

Once a company has the “good faith intention to use the mark,” Raju recommends that a company immediately file an ITU application. She sees two main benefits to such a filing:

• Upon filing, the applied-for mark becomes available in the USPTO’s searchable electronic database. This makes it easy to find “even with a minimal clearance search.” This, in turn, serves to notify others about the intended mark and could serve to stop potential trademark problems “before they even start.”
• Timing is everything. Generally, in the cases of a trademark dispute, the company or person who filed first will be given the rights to the mark. In general, Raju says, “trademark rights accrue to whoever first used it.” Having an ITU application may give the filer earlier rights. In fact, once “an ITU applicant provides proof showing that the mark is in use and a registration is granted,” the date for which the applicant can claim use of the mark “will revert back to the filing date of the original ITU application.”

ITU Drawbacks

The ITU is only the first step in confirming a trademark. While Raju typically recommends that those seeking a trademark take advantage of the ITU process, she points out that there are “two wrinkles” of which applicants must be aware.

The first is that the trademark registration will not be granted until the applicant can show “proof of ‘use in commerce.’ ” Applicants have up to three years to submit this proof. While the clock is ticking, the applicant is also racking up extension fees. Additionally, and perhaps more importantly, if the applicant does not provide the proof within the time allowed, the application becomes invalid. If the trademark is still desired, the applicant must restart the process from the beginning.

Second, there are additional filing fees and legal fees associated with proving use of the mark. Applicants who forgo the ITU process will likely spend less time and money registering their desired mark(s).

Ultimately, Raju believes that federal registration for trademarks is a “bargain.” Such trademark registration protects resources invested in the company’s branding strategy. She further advises that those interested in such protection consult counsel before moving forward with the application process.

Ronnie Raju is of counsel at Wilkinson Barker Knauer LLP. Her article, “Tips on Trademarks,” is included in the September/October 2020 issue of TFM, an electronic version of which is available on the MFM website until mid-November. After that, it will be moved to the members-only area of the association’s website.

Mary M. Collins is president and CEO of the Media Financial Management Association and its BCCA subsidiary, the media industry’s credit association. She can be reached at [email protected] and via the association’s LinkedIn, Facebook, Instagram, and Twitter accounts.