Want to Fully Protect Your Brand? Don’t Forget the Coffee Mugs!

Trademark owners often receive advice from counsel about registering their marks for core goods and services. And many times, that is all that budgets initially allow for.

But as a brand matures and use of its mark expands, trademark owners might not realize that they can also register their marks for less “core business” uses but nonetheless important new marketing uses — namely promotional items.

It is not unusual for trademark owners to give away merchandise bearing their trademarks. Coffee mugs, pens, key chains, calendars, and notepads are common items, and even some “higher end” items might be used for promotional purposes such as jackets, desk clocks, or jewelry. Some mark owners even have a “swag store” that allows customers to purchase items directly to display their loyalty to the brand. As long as such goods are not needed or useful for the trademark owner to provide other services and have value to the user, these items pass the U.S. Patent and Trademark Office’s test of being “goods in trade” and are eligible to be covered by a trademark registration — even if they are only given away for free (i.e., without a commercial sale).

But why register trademarks for these items? Though perhaps trademark owners do not make much (if any) direct profit from the distribution or sale of such goods, taking steps to ensure that the owner is the only one distributing them under the particular mark helps to enhance consumer loyalty and avoid the problem of confusion or harm to reputation caused by others distributing shoddy goods under the same or a closely similar mark.

The mark owner itself does not have to manufacture the promotional goods to be able to obtain a trademark registration for them. Manufacturing goods pursuant to a license agreement, making clear that the mark owner as the licensor owns the mark and that use of the mark on the goods inures to its benefit, is sufficient.

The benefits of registering a mark for promotional items should not be overlooked, as such registrations can often be a strong but silent deterrent keeping others from adopting the same or a closely similar mark for numerous new uses. Trademark owners who wish to maximize protection for their brands should consider obtaining registrations for such promotional goods to expand the penumbra of protection of the marks and enhance the exclusivity of the brand.