Picture this: You’re well over 6 months into perfecting a new fitness product—a speed jump-rope you’re calling Cheetah Ropes—that has experienced wild success in your regional market. You’ve done all the right things up to this point. You’ve scrutinized and refined your business plan, poured resources into product development and distribution, and built up an enviable following on social media. The next step is to go national. But just as you’re about to launch, you get a letter from a small, relatively unknown company called Cheat-a-Rope that makes a product designed to help new jumpers learn how to Double Dutch in half the time. The company, which has a federally registered trademark for Cheat-a-Rope, insists that the brand names are too similar, given that both companies sell jump-rope products. The company demands that you immediately cease using the name Cheetah Ropes.
This unfortunate scenario happens more often than you might think. In a rush to get a product or service to market, companies neglect to investigate whether the catchy brand name they’ve settled on is “confusingly similar” (the general legal term used in this context) to an existing trademark in the same category of products or services.
When it comes to settling on a brand name and logo, you must remember the following: Just as important as building a brand are (1) making an early and vigorous effort to ensure that you can use the words and logos associated with your brand and (2) making it part of your routine business practice to police your brand. Why go to the trouble of developing your product or service, refining your marketing strategy and unleashing your brand on the marketplace if you cannot protect your company’s name and logo from being challenged by a competitor?
Brand protection is particularly important in the fitness industry, where so much of a brand’s content is shared, housed and accessed online and through social media. As the message about a business spreads and the brand becomes more recognizable, a company exposes itself to the risk that copycats will try to pass off a brand’s intellectual property and protected trademarks as their own. Imitation may be the sincerest form of flattery, but when it comes to branding, companies should do everything in their power to squash impersonators as early and swiftly as possible.
The good news is that taking some initial steps to protect your fitness brand is easier than you’d think.
Here are five things fitness companies should do to protect their brands, in the short term and the long term.
Identify and Understand the Competition’s Brand
Before you decide on a final brand name or logo, research and understand your competition’s brand. Your initial market research must include evaluating the branding and trademarks of your competition, not just the features of their product line or their customer base. You want to make sure that no other company that provides goods and services the same as or similar to yours has already registered—or is already using—a similar name or logo.
To see what trademarks have already been registered (or are pending), visit the United States Patent and Trademark Office website (www.uspto.gov) and do a simple search. You can also consult an attorney, who can perform a thorough regional or nationwide search to “clear the mark”—that is, to make sure you are not using a mark that conflicts with that of another brand. Consider doing this before you settle on your brand, so that you don’t invest time and energy in a brand name that someone else already uses. This will help you achieve the unique brand you want while preventing conflicts with competitors in the same space.
Use Distinctive Marks to Represent Your Brand
Closely related to understanding your competition’s brand is being certain that you’ve adopted a “distinctive” mark. Trademarks are afforded varying degrees of protection based on their level of distinctiveness. Marks that are generic in nature receive less protection than marks that are unique. For example, Joe is less likely to receive protection if he calls his new weight-vest business “Joe’s Weight Vests” than if he creates a new word or chooses a word that’s less descriptive of the product, such as “Warrior Vests.” Not only will creating a unique mark distinguish your brand from the competition; it will also increase your chances of receiving heightened trademark protection.
Trademark Your Marks
Once you’ve confirmed that no one else is using your mark, it’s time to apply for trademark registration with the USPTO. From the filing of an initial application to final registration of the mark, the process can take anywhere from a year to several years.
While marks receive what is called “common law” legal protection simply by being used in the flow of commerce, generally that protection is limited in scope and is confined to the geographic areas where the mark is used.
Official registration with the USPTO, on the other hand, provides a number of more robust layers of protection. It discourages the competition from using a confusingly similar mark, because your mark is easily identifiable in a trademark availability search; this eliminates potential conflicts before they start. Registration also provides “nationwide notice” that, as of the registration date, you are the exclusive owner of the mark. Once you’ve registered your mark, you may use the ® symbol when the mark appears on the goods/services for which it was registered. The ® symbol brings with it a level of distinction and shows your competitors that you’re serious about your brand.
Police and Enforce Your Marks
Protecting your brand doesn’t end when you obtain a trademark; part of your brand strategy must be to police and enforce the mark. In fact, you have a duty to police your mark. Failing to do so can result in the enforcement of your rights being barred (even against a particular company that might be using your marks); in the worst-case scenario, you could completely lose all rights to a mark.
To protect against this, fitness companies should consider performing regular searches for misuses and abuses of their marks by setting up Google Alerts, conducting regular internet searches, monitoring the USPTO trademark database or enlisting a professional service to monitor the use of the mark. An attorney could advise you of other options.
Take action if you discover that someone is using your mark. Actions range from enlisting the help of an attorney to send a cease-and-desist letter to opposing the registration of a similar mark. The worst thing you can do is sit by and allow another company to infringe on your mark, given the consequences that come with failing to adequately police it.
Make Sure Your Written Agreements Include Language That Protects Your Brand
Finally, ensure that the agreements you enter into with partners or service providers include language that speaks to brand protection. For example, companies often “co-brand” products with partners or enter into commercial agreements that authorize service providers to use their brand name or logos. Such written agreements (and they should always be in writing) should have specific language that defines the “scope of use.” In other words, clarify in what form, on what products, in what mediums and under what circumstances the marks may be used. Providing well-defined guidelines will force others to maintain the high standards of use that you want for your mark and will help to avoid confusion over how your marks may be used.
These are just a few keys that all fitness companies should think about when developing and protecting their brand. However, whenever you have questions, the best course of action is to consult an attorney who understands the law in your state or jurisdiction and has experience with similar industries.
NOTE: None of the information in this article is intended to create an attorney–client relationship. This article has been prepared for informational purposes only, does not constitute legal advice and is not a substitute for seeking legal counsel from an attorney.
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