Trade mark blunder not the way to go

This op-ed is by Mark Vincent, intellectual property and technology Partner at Shelston IP.


In late January it was widely reported that New Jersey Transit failed to register seven trade marks including its logo and well-known slogan, ‘NJ Transit the way to go’.

The error was costly, both from a financial perspective and a reputational one. As the state’s public transport corporation, NJ Transit operates 230-plus bus routes and 11 rail lines, connecting New York and Philadelphia and providing 223 million passenger trips each year.

According to reports, this is not the first time NJ Transit has mismanaged its intellectual assets: the NJ Transit website was taken offline three years ago because the agency allowed its domain name to expire.

The issue serves as a timely reminder to audit your intellectual assets. Exactly who owns what?

What many people fail to appreciate is that trade mark and domain name registrations are generally issued on a first-to-apply basis. Registration provides exclusive use rights within the nominated categories. One would therefore think securing ownership of those assets – and then holding on to it – would be a high priority for all business owners and brand guardians.

Failing to secure registration – or allowing it to lapse – can severely hinder business operations and dilute the value of a brand. It can leave you exposed to a competitor (local or overseas), or held hostage to the demands of a mischievous squatter or rogue distributor. You might be surprised just how frequently this happens.

An added advantage of a trade mark application is it can also deter others from seeking to register or use similar trade marks for similar goods and services. Bear in mind, a trade mark can be issued for a colour, shape, sound, smell or phrase, not just a logo. As they say, the best defence is a good offence.

Ongoing and effective management of your trade marks and domain names is vital if you seek to protect and leverage your intellectual property. Plus, the price is modest when compared to financial and reputational cost you will incur if you take the NJ Transit route.