As I find myself in both familiar and foreign territory visiting family overseas I have been appreciating the differences in the entrepreneurial rhythm of a different culture and society. Small business tends to dominate the economic fabric of most societies and in many places growing a small business beyond the local area it initially is set up to serve is just not be part of the plan. When there is a clear vision to serve a local customer base, a small business may have different branding and trademark priorities than a business that has an eye on growth and expansion beyond its local presence.
To tease out some of these differences and navigate the implications for developing a trademark strategy let’s focus on three questions: “Can I”, “Should I” and/or “When should I” take steps to adopt and register a trademark.
Implicit in this bundle of questions is the presumption that at some point consideration should be given to registering trademark(s). There are a multitude of good reasons for registering a distinctive trademark in order to support the branding of a business, locally focused, or not. Unless a business operates using generic or descriptive terms to make itself and its offerings known in the marketplace, often the issue is a question of timing and the prioritization of resources, and not so much if it is worth doing in the first place.
Using the food and beverage industry as an example, consider a customer’s dining experience at a hip restaurant in the trendiest part of town. If positive, the customer knows the experience depends on the chef and ambiance created on site. The name of the restaurant is a marker of where to go to get the desired experience. This is in contrast to when a customer likes a food or beverage product that has been scaled for distribution through multiple outlets. In this case, the trademark associated with the product is the one thing that can inspire confidence in consumers that they are getting what they are looking for from a reliable originating source. In both cases, the initial key legal concern is to avoid infringing on the marks of other food/beverage enterprises. Conducting a clearance search to address the “Can I” adopt and register a trademark question is the first investment needed before moving on to the “Should I” question, and/or to the “When should I” question.
If the “Can I” question is answered in the positive, going to the appropriate next question requires a deeper inquiry about whether to remain a locally focussed small business. Basically, any time that a small business owner turns their mind to developing product lines, franchising opportunities, or selling the business, the option to register trademark(s) should be visited, or revisited, as the case may be.
The “Should I” question of whether or not to register a trademark comes into play if the reputation and good will of your business is likely to develop primarily from customers associating their experience with the people and/or location representing the business, rather than a product that is being sold. Other examples of such businesses may be service-based enterprises (e.g. individual coaches and wellness providers), intermediate (B2B) supply chain distributors, and common commodity retailers (e.g. local convenience stores). Customers are attracted based on what they know about the experience interacting with personnel and/or the experience they have by accessing the business site. In these situations, when the customer has or can have more direct contact with the business owner, taking the step to register a trademark may not be as crucial.
In any event, the “Should I” question answered in the negative need rarely be a final decision. Within certain limits, this decision can become a decision to put off registering a trademark as part of a “When should I” inquiry. If after a risk assessment, putting off the registration of a trademark is the sound business decision to make, the ever changing commercial landscape is reason enough to periodically revisit that decision. This can be done by monitoring the commercial landscape (e.g. through online searches) and the activity at relevant Trademark Offices. This allows small business owners the opportunity to have notice of marks being adopted by others and of applications to register confusingly similar marks. With notice, a small business owner can then take the necessary action, with the support of an experienced trademark professional, to address competitive threats through trademark registration, negotiation, or otherwise.
Kyma Professional Corporation