Trademarks typically garner the most pop culture attention among the major intellectual asset categories, but that is not to say the processes surrounding their registration and enforcement are always readily understood. For companies or sole proprietors wondering when the time is right to formally register their mark, there are several subtle factors to consider.
As Boston-based attorney Shannon Sadowski recently noted, brand managers often forget that the exclusivity afforded to trademark holders only extends to the specific industry in which it is applied. There are any number of cases in which products with very similar or even identical names legally co-exist without contention considering they're associated with entirely different goods. As a result, businesses operating in a niche setting may not necessarily have to prioritize trademark registration unless they suspect a possible influx of industry competition.
Trademark law is also a bit simpler to decipher than patent law when it comes to prior use disputes, according to Sadowski. Although still potentially expensive, companies are often able to deflect infringement allegations by confirming that widespread use of the mark commenced prior to the registration of any relevant trademarks filed after the fact by eventual competitors.
Nevertheless, trademark registration provides the most comprehensive protection for businesses in both bustling or emerging market segments. Those pursuing such a strategy should take precautions to ensure they get everything right the first time, however. According to BusinessWeek, hastily drafted applications can be costly in terms of both re-filing fees and time ceded to industry competitors.