by Joe Dages – middletonlaw.com/joe-dages
One word, symbol, phrase or color combination can convey an important yet intangible message to potential and current customers about a business, the consistency and quality of its products and services, the values it promotes, and how it is different from its competitors. Therefore, businesses intuitively understand there is value in a brand. However, it is not always clear exactly when and how a business should go about protecting its valuable brand assets.
Businesses often think of their “brand” as the company or product name. While a name can be central to one’s brand, it is important not to overlook other important brand assets. In addition to a name, businesses often leverage creative symbols or logos, slogans, color schemes, product packaging and design, and even sounds and songs to spread the company message, to identify their products and services, and to distinguish themselves from competitors.
For example, we are all familiar with the name “McDonald’s” as it relates to burgers and fries, but may actually be more accustomed to seeing the company’s “Golden Arches” logo on signs along the highway. Similarly, tech companies such as Apple, Facebook, Twitter and Google are household names, but we almost certainly encounter and interact with their well-recognized app icons as much as, if not more than, those company names. Moreover, while “Maker’s Mark” is the name of an iconic brand of Kentucky bourbon, and its bottles stand apart from others on the shelf because of the distinctive red wax-dipped bottles.
A brand is often a culmination of its component parts. Therefore, it is important not to neglect any of the component parts when building, and ultimately protecting, one’s brand.
When should a business begin to protect its brand?
Before adopting a name, logo, slogan or color scheme, for example, a business should first be comfortable that the asset is available for use. After all, businesses are loath to invest time and resources into a brand asset only to find out later that it must change course because use of the asset encroaches upon another’s rights.
A simple internet search can be useful in uncovering readily identifiable risks, but it is not generally sufficient for fully vetting a new brand asset. In addition to search engine results, a business will want to consider whether a new brand asset can be registered with the U.S. Trademark Office, can be incorporated into a domain name, and can be used across a variety of social media platforms without conflict. A trademark attorney can be an invaluable resource when clearing a trademark for use.
In addition to searching the availability of a new brand asset, businesses can take important steps to protect the asset even before it is used publicly. In the U.S., trademark rights are generally granted to the first person to use a trademark in commerce. However, the U.S. Trademark Office allows one to file a trademark application and establish a date of priority for a given brand asset even before it is formally adopted. So, taking the appropriate administrative steps early in the brand development process can be critical for protecting, and ultimately creating value, in a new brand asset.
How can a business protect its brand?
Once one has acquired a brand asset, the burden of protecting it rests with the brand owner. In fact, failure to adequately protect one’s brand can lead to the devaluation of the brand or even a loss of rights. Therefore, it is important to establish a proactive program for protecting, policing and enforcing one’s brand assets.
The simplest step a business can take to protect a brand asset is to use it and use it consistently. If a trademark goes unused, its rights can be abandoned. What is more, if a trademark is not used consistently, then its power to distinguish one from others can be diminished.
Additionally, and as alluded to previously, one important step for protecting a brand asset is to register it with the appropriate governmental authorities. For example, the U.S. Trademark Office provides a process for registering one’s brand assets. The resulting registration confers important legal benefits, and can serve as both a sword and a shield for protection when needed. Additionally, businesses can engage customs and border patrol agencies to help identify and prevent counterfeit and grey market goods from entering the market.
Furthermore, it is difficult to stop others from violating your rights if you are unaware of their conduct. For that reason, businesses can and should establish and implement a brand monitoring program to review for whether others are using their brand assets without authorization or are attempting to trade off of the goodwill associated with their brand.
Have questions about your organization’s intellectual property?
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