Brand Protection Today – Article 1: Choose Wisely
Brand Protection Today – A Series from InfoLawGroup
Today’s techniques for delivering messaging: using behavioral algorithms to place ads on Facebook, finding the micro influencers for Instagram, organizing voice search or live video streaming on YouTube, or tweaking artificial intelligence for smart chat have little in common with those used a mere decade ago. What remains unchanged since the 1960s Mad Men era? Any marketing dollar spent that doesn’t build, enhance and burnish a brand’s equity is a wasted dollar. In 2021, brands play an outsize role in purchasing behavior, anything (yes people too) can be a brand, and a contact point with a brand – even the most remote – can affect brand equity. Lawyers can help establish and protect, what is for most businesses, their one true irreplicable asset.
At InfoLawGroup, we recognize that communication technology is changing at a furious pace and the need to protect brands is greater and more complicated than ever. We deal with these issues in our daily practice and are sharing insights in this multi-part series on Brand Protection. Please subscribe HERE to receive InfoLawGroup Insights, and we welcome your feedback too.
Brand Protection Today – Article 1: Choose Wisely
By W. Scott Blackmer and Sara Skinner Chubb
What’s in a Name?
Names matter: brand names, company names, campaign slogan or tagline, a domain name, a hashtag, a social media username, handle, or page name. It’s fundamental that you have to find the right name for your brand and then promote it engagingly. (And then you must live up to that reputation, of course!)
Naturally, we think of this as a topic for creative genius and market research. But the lawyer also has a role in protecting brands from being trashed or copied, and a lawyer should be consulted right from the outset in choosing brand names that can be protected, and names that are not dead-on-arrival because they interfere with another company’s prior rights.
There are also other things that you should consider before bringing your idea to your lawyer:
Is your name something that will be used as the name of your business? If so, you may need to reserve your business name in the place you intend to form your business. Governments try to avoid giving out duplicate names, to avoid confusing consumers, investors, and business partners, so be sure to check online for business name or trade name availability in the jurisdiction where you are or will be established. If you anticipate doing business in multiple states, provinces, or countries, you may need to register your business name in those regions as well. Be sure to check with your corporate attorney for local requirements.
Does your name have any unsavory associations? Imagine the name of what you hope to be the breakout children’s toy of the holiday season being the same name as a prescription drug or an “adult service.” Or maybe it has an undesirable meaning in one of your target markets, such as “Bing” (Microsoft’s search engine) being a word for “frozen” or “ill” in Chinese.
Is your name commonly used in your industry, or descriptive of your goods or services? If your name is so common or descriptive, it may not uniquely identify your product or service or sufficiently distinguish you from your competitors in the way that you want. These concerns, in addition to being marketplace concerns, can prevent the registration of your mark if you choose to seek registration.
Say Yes to the Address
Traditionally, looking for suitable domain names or social media usernames was an afterthought, but now it is often one of the first stops, because otherwise you will waste time developing brand names or business names that are effectively preempted. With few exceptions, you will want to use your name online for marketing, sales, customer service, investor relations, and other functions.
As a critical first step, determine how you will want to use your name: Only on certain social media? For one or more websites? For a mobile app? In which jurisdictions? Is this likely to change over the next few years?
Even if you do not plan to use the name extensively online, you may want to obtain the more obvious domain names or social media pages as a defensive measure, to prevent potential competitors or critics from doing so.
If you cannot find a good domain name, be sure to ask yourself whether it has to be a .com. Maybe one of the new generic top-level domains (gTLDs) suits your business, such as .cloud, .boutique, or .consulting. Also consider the need for the corresponding country-specific domain, such as .ca for Canada or .jp for Japan. Do you also need to register the same name(s) defensively in the .org, .net, .biz, .info gTLDs, and then redirect them to your site? Each single registration fee isn’t much, but it starts to add up, and a domain portfolio will need to be managed to avoid error messages and ensure timely renewals. Still, consider these management and defensive registration costs against the cost of potentially having to enforce your rights against later registrants, which is something we will talk about in a later article.
For social media presence, ask yourself: which platforms? Well, that depends on the demographic and geographic markets you are aiming for and the purpose of your platform presence. The brand may simultaneously want to target gamers on Twitch while recruiting potential hires on LinkedIn. Each presence will require time and money to maintain credibly. Are the corresponding account names or usernames available on each of the desired platforms? If not, who owns them? Competitors whose rights you may be infringing or businesses outside your jurisdiction who may confuse your target consumer?
Most organizations today seek to establish a parallel presence across several online channels, and they try to acquire appropriate address labels in each that enhance their image and facilitate their communications. The reason is that every one of these can be targeted for competitive (and possibly deceptive) advertising and for more nefarious purposes such as phishing attacks.
A point of caution: when registering domain names or social media accounts, be sure that they are registered in the name of your organization and that a responsible officer or employee of the organization has the account credentials. There are many sad stories about contractors or former employees registering domain names and social media accounts in their own names and then holding them hostage. And yes, this has happened even to sizable companies!
I’ve Got My Name! …or Do I?
So, you have chosen your brand, and you have found available online addresses that correspond to it. That does not mean it would be wise to use it. Your use of your name or address may infringe another’s rights. If someone else thinks you are infringing their rights, they can bring a lawsuit or even stop you from selling your product or service.
Before using the name, and before investing time and money in trademark applications (unless you feel really lucky), you should conduct a trademark clearance search to discover whether there are existing registered trademarks, pending trademark applications, business name registrations, domain names, unregistered uses of the name by others in connection with similar goods or services, or other uses of the name that could be seen as “confusingly similar” to your name. “Confusingly similar” is a term of art with a particular legal meaning and required analyses, so you should have the search conducted by a lawyer knowledgeable in the field of trademarks. They can give you a report and risk assessment based on the parameters you set, which can include domain names and social media accounts.
Don’t forget to consider your business plan. Be sure to check all the international jurisdictions that are likely to matter to you. The grant of trademark rights in one country do not assure you of the right to use or register your mark in another country.
Protecting Your Investment
OK – so now you’ve got your name and determined that there is little risk that your use of it will infringe someone else’s rights. Do you really need to take steps to register that name as a trademark, and if so, how? That depends.
Trademark registration generally makes sense once you have settled on a brand and intend to keep it over the long term and use it publicly. Registration provides a public record that acts as a deterrent to later would-be adopters of the mark, as well as legal presumptions that significantly improve enforcement. With registration, you have readier access to enforcement mechanisms such as assistance from the US Customs and Border Protection in seizing counterfeit goods, and can participate in platform brand registry programs (such as Amazon’s) that facilitate taking down ads for counterfeit products and services. But while you may not need to go to the expense of registering short-term marketing campaign slogans as trademarks, for example, it is still prudent to appropriately clear such slogans and trademarks to avoid the issues we outlined above.
That said, there are costs involved in trademark registration and maintenance, and they multiply according to the number of marks, classes, and jurisdictions involved. Remember also that an application to register a trademark is very exacting. You can change and fine-tune a brand name or logo on your website or letterhead, but once you register it as a trademark, it is locked in that form; a change means a new application. So when you file an application consider these items:
Select the “international classes” of goods and services carefully. You pay an additional fee for each class, but there will be delays and typically additional legal fees if you have to make a new application later.
Make sure you are settled on the exact mark. Design marks are protected in precisely the form registered, including colors if you cite color as a feature of the mark. If you register a word mark as standard characters, you can present the characters in any font or style, but to maintain the registration you cannot change word order, and may not be able to change punctuation or spacing, for example. Consider this carefully when developing your logo, color scheme, style guides, and layout for mobile as well as larger screens.
File sooner rather than later. While you cannot secure a trademark registration in the U.S. until you actually use the mark in commerce with the goods or services listed in the trademark application, you can file an application to secure your priority of rights over others as soon as you have a bona fide intent to use the mark – so there is a benefit to moving quickly once you have decided on a mark.
Consider whether filing internationally is warranted. Registration in the US does not entitle you to use or registration in other countries. Plus, most countries rely on “first to register,” so there is again an advantage to moving quickly.
On balance, the upfront investment of time and expense in carefully choosing and clearing trademarks is eminently worthwhile. It avoids delays and additional costs in responding to office actions and objections in the application process for registrations and potential litigation thereafter, or the dreaded outcomes of rebranding and pulling advertising and changing websites, social media, and packaging.
As you can see, diligence and forward thinking at the outset help mitigate future risks and position you for success later on. Think about the following at the beginning of the brand development process:
Choose a name that is sufficiently unique, consider unintended meanings and avoid unsavory associations
Confirm your brand name is available on the platforms you wish to use to reach your target audience
Secure your desired domain name(s) and consider defensive registrations
Clear your marks and consider pursuing trademark registrations to strengthen your protection
Consider expansion plans at the outset when tackling the items above
With proper care, brand equity and trademark registrations become valued assets in a company’s intellectual property portfolio. Like any other assets, they must be cared for properly. Join us next week for a discussion of the tools and strategies to protect these important assets.
Originally published by InfoLawGroup LLP. If you would like to receive regular emails from us, in which we share updates and our take on current legal news, please subscribe to InfoLawGroup’s Insights HERE.