Brand Safe:  Top Tips to Picking a Protectable Brand

Branding is collaborative and multi-dimensional process to create a unique representation of a company, product or service.  More than a name or a logo, a brand takes into consideration company culture, vision, values, customer profile and more.

While all of that can be a heavy lift for your marketing agency and its clients, this post is focused on trademark considerations that should be top of mind as you do this work.

Creating and growing a brand requires time, money and energy, so it’s smart to take early steps that safeguard and protect your investment.

I’m often asked how to pick a brand that will be legally enforceable and stand the test of time under trademark law. That’s a great question and so I’ve written this article to help you understand what’s needed to create a protectable brand as well as what mistakes to avoid.

4 Branding Choices That Negatively Impact Trademark Protection:

1.  Choosing A Descriptive or Generic Name

Avoid choosing a brand name or mark that describes your products or services too closely. That’s one of the top reasons that federal trademark applications are refused for registration. Attempting to register highly descriptive or generic terms is risky business and often poses an expensive and lengthy process that places a heavy burden of proof that the brand is unique.

The easiest trademarks to register with the USPTO and to defend in cases of infringement are known as “inherently distinctive.” The more unique, coined or “made up” the name or mark, the easier it will be to receive trademark protection. Examples of great brands with invented names include Google, Sony, Pantone and Ikea.

The Takeaway:

While you may have good business or marketing reasons for choosing a very descriptive brand, know that it can impact your ability to legally protect it and prevent others from adopting it too. Not only do original names make for good brands, more importantly, they make good brands protectable.

2.  Choosing A Mark That Can Confuse Buyers

Choosing a brand name or mark that is very similar to the brand name or mark of another product or service in your industry, either in sound or appearance is known as a “likelihood of confusion” issue in the trademark world. Likelihood of confusion is one of the top two reasons a trademark application is refused for registration (descriptiveness, see Point 1 above, is the other).  Not only are these marks nearly impossible to protect as trademarks, the lost time and money spent trying to sort out consumer confusion or debate an infringement claim of another trademark owner damages the brandholder. So avoiding trademark confusion with another brand is a sound business choice.

The Takeaway 

This is another argument for selecting a mark that is as unique and distinctive as possible when you’re branding or rebranding. Rather than spending your valuable time trying to preempt a competitor from using a specific name, logo, tagline or other identity element that is similar to yours, focus on creating a protectable brand.

***A brief intermission and some timely context here – on the first publication of this post, we’re seeing a dramatic increase in the number of rejected trademark applications by the U.S. Patent & Trademark Office due to either descriptiveness or likelihood of confusion grounds. Whether this is because of tightening examination standards to reduce the number of new trademark registrations (and arguably “upgrade” the quality of registered marks overall) in the federal trademark database, or because of a massive influx of new trademark applications caused by factors such as the Amazon Brand Registry standards, brand holders and the agencies who help them should understand that application approval standards have gotten tougher. ***

3.  Due Diligence Delays

 Trademark protection is not a fast exercise. It takes planning, judgement and decision making, all of which add time to the process. For this reason, it’s wise to begin the trademark search, clearance, and registration processes as soon as possible.

Starting early is also a great way to avoid putting your agency in the position of helping its client develop a brand that ends up being unavailable for trademark reasons, after the client has already sunk money into the work.

The Takeaway

Start the trademark searching and clearance process as soon as possible, and consider doing trademark screening before you pitch potential brand names to your client. Once you’ve made a decision to move forward, encourage the client to begin the registration process right away.

4.  Choosing a Mark That Identifies Systems, Processes or Methods

Don’t expect to receive trademark protection for a brand name or mark that identifies only a system, process or method, no matter how original, creative or lucrative that system/process/method might be. These are routinely refused registration as trademarks unless they also clearly identify a product or service along with the system, process or method. For example: a phrase used by a consulting firm (or marketing agency) to identify its proprietary method, but that also brands the consulting services along with the method could be acceptable.

The Takeaway

Trademark protection is available to words, logos, phrases, sounds (and a few other things) that identify a product or a service sold in commerce – not terms that brand only a system, process or method.

One Way to “Think Differently” About Brand Protection

 While most brandholders are concerned (rightly so) about protecting the words and phrases incorporated into their brands, if your brand contains original design elements, there’s an additional option to consider.

In the case of a logo mark, you might also be entitled to seek copyright registration of the graphics and artwork itself. Copyright will likely only protect the visual representation of your brand; however it has the benefit of layering protection where the word components in your brand are less distinctive, and it is not category specific – meaning that a copyrighted design owner may be able to  protect it from use from any third party, in any industry.

The Takeaway

Consider the most critical components of your brand (words, pictures, designs) and broaden your perspective on the legal protections that could be available.

Conclusion

Developing and maintaining a brand is exciting, but hard work, and is a long game. Don’t let your efforts (and your client relationships) go to waste by avoiding the legal considerations involved in protecting the brand.

Postscript

Registration fees at the U.S. Patent and Trademark Office will increase in January 2021 – reach out to us if you have questions about how this will impact you.

Questions about brand protection? We can help:  sharon@legalandcreative.com.