Protecting Your Brand With a Trademark

Regardless of industry, one of the most valuable assets a business owns is its brand. And while not every company can put the same level of dollars toward building and growing a brand as global corporations, any business that has invested time and money into its name has a reason to protect it. This is especially true in multifamily, where a property’s brand can be a unique and memorable point of differentiation that not only attracts prospects but also creates a connection with residents that builds loyalty over time.

A strong brand identity for a specific property can speed leasing, increase referrals and enhance resident retention. That’s why it’s important to understand why and how to tap into the safeguards available through a trademark—which provides legal protection for a name, logo, slogan, mark and/or trade dress—and your recourse if your brand is copied or infringed on.

Who needs a trademark?

Although companies are not legally required to register a trademark to obtain trademark protections, doing so can provide significant benefits, including establishing rights to use a name, a phrase, a slogan, an image or a logo. A small, local business that’s less reliant on brand identity may choose not to register a trademark and instead rely on state common law for brand protection. But businesses planning to expand across regions, seek investors (which typically require proof of brand protection) or license their brand to other firms for a fee should consider seeking federal registration of their brand for more robust protection.

Getting started

Once you decide to pursue a trademark, a trademark attorney can help navigate the trademark process with the United States Patent and Trademark Office, the federal agency that registers trademarks and oversees the application, opposition, registration and cancellation processes.

One of the first steps in determining whether your brand, logo or slogan may be eligible for trademark protection is confirming you are starting with a mark that is not generic or overused. Words and phrases that are overly general and ubiquitous are too generic to qualify for registration. For example, “park,” “village” and “place” are the most commonly used words in apartment names, according to Apartment Guide and trademarks predominately comprised of such commonly used terms (i.e., “Park Place”) likely would not qualify for registration. Your attorney will also need to search the USPTO’s database of existing “marks” (names, logos, slogans, image marks and other elements eligible for trademark) for any conflicts, in addition to conducting a broader review and research for similar trademarks.

It’s also advisable to register all relevant domain names and social media handles through web hosting sites and social platforms. Because these can be claimed by whomever is first to the table, regardless of whether they own the trademark, locking these assets in is an important step in protecting your brand, separate from filing with the USPTO.

Whether a business seeks registration of its mark or not, it should continuously monitor for businesses using a similar mark, logo or slogan for related goods or services. The attorney who filed the trademark application can sign up for a monitoring service that will notify the filer of any applications for potentially similar marks.

Handling trademark infringement

After the work of not only creating a compelling brand but also taking the extra step of protecting it through a registered trademark, what do you do if someone infringes on it? For a multifamily property, that violation might come in the form of similar branding, with a competitor using a name, logo or tagline that’s close enough to yours that it causes confusion or the perception of an affiliation.

If this happens, your attorney can:

1. Send a cease-and-desist letter. The attorney can send a cease-and-desist letter to the owner or attorney listed on the trademark application/registration or to the business’s registered agent (if the mark is not registered) asking the user to stop all infringing use.

• Follow through with legal action and seek to recover costs and fees. If the infringing user refuses to stop the infringing use, a lawsuit can be filed seeking to prohibit the infringer from using the mark. If a judge finds there was infringement on a registered trademark, the judge can order the infringer to pay the plaintiff’s legal costs pursuant to the Lanham Act. However, a losing party is generally only required to pay the plaintiff’s attorneys’ fees in “exceptional” cases, meaning the defendant’s use of the trademark was malicious, willful, fraudulent or otherwise egregious.

While the above outlines a simple scenario, trademark cases aren’t always straightforward. The party accused of infringement may be difficult to locate or may not respond to cease-and-desist letters. There’s a chance a judge might determine there’s no likelihood of confusion, that the defendant is actually the “senior user” of the mark, or that the plaintiff abandoned its mark, rendering it unprotectable. It’s also possible that an infringing user has developed a negative reputation that’s now associated with your business, in which case, rebranding yourself might be a reasonable option.

Considering the relatively low investment, the trademark application, registration and monitoring process can provide an invaluable protection to your brand. A brand is part of the equity you have built in your business, a value typically well worth defending.

Nicole Prefontaine is an attorney at Ginsberg Jacobs.