Imagine you create a marketing/branding package for a client. Your client purchases inventory and marketing materials with the new logo you designed, only to receive a cease and desist letter in the mail a few months later, threatening a lawsuit. Your client can’t use your designs. The responsibility could trickle down to your team.

The above scenario is avoidable.

If you fail to consider trademark protections when you create designs or other brand elements, you may face what boils down to one big problem: losing money. In the best case scenario, you have to re-do all of your work and offer a refund. In the worst case scenario, your client may seek compensation for the inventory and marketing materials covered in the now-useless designs. You might also be burdened by legal fees. Not to mention, your reputation could suffer tremendously. A failure to consider trademark protection can be fatal to a marketing business.

Why does client need to consider trademark?

You may be wondering how to propose the idea to your client. Why would your client want to pursue a trademark? And who can help them?

  • Brand equity - A trademark adds legal rights to a brand and thus increases its value.
  • Risk mitigation, Liability - By ensuring that others are not using your mark, you reduce potential legal consequences for infringement.
  • Protection in Competitive Space - A trademark gives you legal grounds to enforce protection of your mark so that others can not use it and confuse consumers.
  • Announces Intent to Compete - Brands for which someone sought legal protections might be taken more seriously in the marketplace. A trademark really announces your intent to compete.
  • Really No Cons to “Making Your Mark” - ® ’s are low cost for federal coverage & ™’s are free for local coverage. The entire process of obtaining a trademark is relatively quick & easy. Perhaps one of the only notable cons would be that there was no long-term intent by the client to build their brand with the work being done.

Clients serious about owning a business should understand the importance of a mark. It is likely the business sought marketing services for help creating some sort of mark. If it is common knowledge that marks are useful and important to compete, then why would a business not seek to protect something of such importance? After all, how damaging or inconvenient would it be if the business could no longer use its mark because a competitor already bought the protections for something similar?

Build Brand Value

A well-marketed trademark can help consumers recognize a business or brand and distinguish goods or services from those offered by similar companies. The mark can also signify a certain quality of goods or services consumers can expect. The value of a company is measured not only by objective quantifiers, but also by more subjective measures like reputation and brand; a trademark makes those subjective measures more tangible.

By registering a trademark, the company purchases protections that help solidify the brand, distinguish itself in the market place, announce an intent to compete, and add value to the company. There are no downfalls to obtaining a trademark for a serious business looking to compete in the marketplace, and odds are that your company is already using some sort of identifier to announce its presence in the market. Why not take the step to protect your company’s assets?

Best Practices

Protecting your work, while also protecting your client, requires simple due diligence. A key component of due diligence is to include in your workflow a review of existing marks to ensure yours is not already protected by someone else.

You know why it’s important to talk to your client, and you know how to pitch to a client. To protect both your marketing business and your client’s investment, consider adding the following trademark considerations to your best practices:

  1. ™, or not to ™ - Include considerations for ™ versus ® into your workflow
  2. Do the due diligence – Be sure your designs are not infringing on someone else’s trademark. Resources to help you include online research, the USTPO Trademark Electronic Search System (TESS), and a trademark attorney.
  3. Educate your client - Recommend that your client speak to a trademark lawyer or direct them to the USTPO website for information about trademarks and how to register. Keep in mind that advising your clients about trademark law could constitute to the unauthorized practice of law. So, unless you are lawyer, it is best to direct your clients in the right direction towards the USTPO or a lawyer.
  4. Document - After your client understands their trademark options or has spoken with an attorney, document your client’s decision regarding registration. Documentation of your client’s decision might help mitigate your liability if your client returns to your office complaining of someone else using “their mark”. Consider including a disclaimer to protect your marketing team or agency against your client’s decision.


Blog Author and Attributor
Candice Landry

Candice is an innovation strategist at 10e5 Solutions. As an partner during new product development and commercialization, she helps innovative companies transform their ideas into assets. By aligning the innovation and business strategies, competitive new products get to market with the most elbow room and for the longest period of time. She is passionate that return on innovation is possible with discipline, focus, creativity, and a direct collaboration with the marketing teams. Candice also actively mentors in STEM initiatives.

Lisa Angelo

Lisa M. Angelo is an attorney licensed in Texas & Colorado. Gaining experience defending insurance companies in first-party insurance claims, Lisa opened a "virtual" law practice, utilizing cutting edge technology to bring high quality, convenient legal services to her clients. She has experience advising clients in general business matters including intellectual property considerations. Her law practice is also focused on insurance and cyber liability, including cyber insurance and cyber risk management.

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