The Business Law Blog

Whether they’ve developed the latest fitness craze, industry disturbing technology, or built a  global agency, businesses must protect every aspect of their intellectual property – including registering its actual name and the logos that go with it as federal trademarks.

A trademark can be any number of things – words, a logo, a slogan or a phrase. Trademarks help consumers make a distinction between different companies with related products or services in the marketplace. When launching a business, it’s vital for businesses to trademark their brand, business names and logos to safeguard their intellectual property from theft and piracy.

But registering a trademark isn’t just an opportunity for entrepreneurs to preserve all of their hard work from getting used by another company – it’s another way to make money too. Some trademarks are worth billions. Google’s trademark value totals a whopping $44.3 billion. Microsoft’s comes in at $42.8 billion. Walmart’s weighs in at $36.2 billion.

Of course, billion-dollar values in trademarks don’t happen overnight, but you can start to build an IP portfolio now so you can increase the monetary value of your business by capitalizing on your trademarks. Here are steps to take to ensure your trademark has value.

Get creative

Before you register your trademark, come up with a memorable and distinctive name, slogan or logo. It shouldn’t easily be confused with another brand or company. And you should make it your own.

Many highly successful brands are ones that are made of words and images that portray their business and describe the goods and services they provide in new and unusual ways. Consider Pinterest, where you can pin your interests, or Microsoft, a mashup of microcomputer and software.

Have a Killer Slogan

An additional way to add to your trademark portfolio and create more value is to have an incredibly marketable slogan that you come up with based on a current trend, an industry or region. Consider the story of boxing ring announcer Michael Buffer, who has made more than $400 million with his trademarked catchphrase, “Let’s Get Ready to Rumble.” Talk about monetizing a trademark.

Make it legal

To enjoy the full benefits of a trademark, you’ll need to successfully apply for one with the U.S. Patent and Trademark Office (USPTO). Applications for federal trademarks, filed online through the Trademark Electronic Application System, can take time – 8 to 12 months on average.

Once the USPTO has decided that the application has met its minimum filing requirements, it’s assigned a serial number and sent to an examining attorney. That attorney reviews whether the application meets the required rules and statutes. If the examining attorney at the USPTO decides that there are problems with allowing the trademark to register they issue an “office action”, which explains in detail their arguments against registering the trademark and outlines any changes needed in the application. Applicants have six months to respond to an office action.

Working with an experienced trademark attorney can streamline this process, helping applicants overcome the challenges of an office action and, ultimately, ensure a trademark application is successful. The examiner of your application at the USPTO is an attorney as well, so it is difficult to make the right arguments unless you have a trademark law background.

Consider your options

Once you’ve come up with a creative name, logo, and slogan and they are federally registered, you now are ready to monetize your trademarks. Options include:

• Licensing your trademark and allowing another company to use it for particular goods and services. Trademark licensing is fairly common. Think of the sports teams that allow other companies to use their team name and mascot on anything from sports drinks, car washes, restaurants or celebrities who license their names so they can be emblazoned across beauty products or a fashion apparel line.
• Co-branding with another company where you each take advantage of the other’s strengths and trademarks. Examples of this kind of joint venture include Bonne Belle and Dr. Pepper teaming up on a flavored lip gloss, Betty Crocker and Hershey’s collaborating on a new brownie flavor and Nike and Apple working together on products for athletes.
• Getting capital through the securitization of trademarks, which is when companies use the value of trademarks and other intellectual property to generate financing.

Monetizing trademarks can bring substantial new revenue streams to businesses. But to take full advantage of the opportunity, startups and growing businesses must look for ways to protect every asset they create – especially their trademarks.

Not your average law firm. Think of us as the next step in your company’s growth. At Gouchev Law in New York, we help companies of all sizes obtaining the trademark and IP protection they need to grow in today’s economic environment. Call us at (212) 537-9209 or schedule a free strategy session today to see what Gouchev Law can do for your business.

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