Back to Recent

EXPANDING YOUR BUSINESS – DON’T FORGET ABOUT THE BRAND! TRADEMARK CONSIDERATIONS

You have a successful product or service, and now you have an idea for expansion. Whether you are considering a new location, or a new product or services line, once you determine that the proposed expansion makes good business sense, the next step is to make sure your brand, or trademark, is available for the new use. Some key considerations:

1. U.S. Expansion – If you already federally registered your trademark with the USPTO (United States Patent and Trademark Office), then for expansion geographically within the U.S., you should be fine, because a federal trademark registration gives you nationwide rights. The registration can be used not only to stop “common law” (unregistered) use that post-dates your first use, but also use which started before your use but after your filing date. This applies no matter where the use is – for example, one of Boston restaurant clients recently stopped use of its mark in Miami. Another Bos-ton restaurant enforced its rights in San Francisco and Arizona. A registration can also be used to limit uses which pre-date your use or filing date (“senior use”) to the specific geographic area of that use. If your mark is not already federally registered, you should do that as soon as possible. A registration is a valuable tool and asset, because in addition to con-ferring nationwide rights in terms of use and enforcement, the USPTO database also acts as a notice system to others and therefore often prevents similar uses – not to mention a registered mark is worth more than an unregistered mark should you have a business valuation for M&A or financing purposes. Either way, you should still do a search to make sure that no one has started use of your mark elsewhere in the country, and specifically in your proposed new locale. If you do find other uses of your mark or anything confusingly similar, you will need to enforce your trademark rights, or risk losing them.

2. Foreign Expansion – Trademarks are territorial, which means that a registration in the U.S. does not mean you have rights in Canada, or Europe, or anywhere else. Therefore, if the expansion is in another country, then you will need to register there. Keep in mind that while the U.S. recognizes common law use – 99% of other countries do not. No regis-tration, no rights. This is another good reason to have a U.S. federal registration – you can use it as the basis for foreign applications, making the process much easier.

3. Product or Service Expansion – Perhaps you have a restaurant, and now you want to sell food products such as a sauce or salad dressing, or perhaps you are a hotel and want to offer tour services, or open a spa. If you did a trademark search before using your mark, then hopefully that turned up any uses within your “natural zone of expansion” and you already know the mark is clear for the additional goods or services. If not, then a search is now necessary, both on the USPTO site and common law to see if there are any existing uses for your mark or a similar mark for the new products or ser-vices. If the mark is available, then you should apply to register it for the new product or service. If you see possibly infringing uses, you may or may not be able to enforce your rights. If you have a federal registration, then you have a better chance. If not, then you may need to consider a different brand for the expanded use.

As you can see, doing your trademark homework can help you expand smoothly and without unnecessary legal problems and expenses. Searching and registering the mark to reflect your current and proposed use gives you the information and rights you need to move ahead with confidence – before creating labels, signs, packaging, marketing materials, and other items for the new product, service, or location.

Stacey C. Friends is an attorney in RIW’s Trademark, and Hospitality & Retail Services Groups. She can be reached at scf@riw.com.

POSTED IN: Articles & Quotes, Hospitality & Retail Services, Intellectual Property, News

Print to PDF