By Erin Lewis, Shareholder, Brownstein Hyatt Farber Schreck
Picture a laundry detergent. Let me guess … Tide? You have just demonstrated the power of branding. In today’s crowded marketplace, a company’s brand can be its single most valuable asset. In fact, the world’s top brands are estimated to be worth as much as $150 billion. With so much at stake, you should be thinking about brand protection before you ever open your doors for business or put a product on the market.
All Brands Are Not Created Equal
Legally speaking, a company’s brand refers to its legal rights in a trademark—defined as a word, name, phrase, symbol or design that distinguishes the goods or services of a particular source from the goods or services of others. Thus, brand protection begins with selecting a strong, enforceable trademark. Naturally, you may gravitate toward a trademark that informs consumers about the goods or services you are selling. However, these marks are generally deemed “descriptive” and therefore the weakest and hardest to protect.
Under trademark law, the strongest and most protectable marks are “fanciful” or “arbitrary.” A fanciful mark is comprised of a made-up term or terms—think Google®—with no independent meaning or significance beyond its trademark function. In contrast, an arbitrary mark has independent meaning, but that meaning is insignificant as applied to the goods or services offered under the mark. For example, Apple® is an arbitrary mark because the term “apple” has no significance when applied to computers and electronics.
Getting the “All Clear”
After selecting a potential trademark, you should “clear” the mark to confirm it is available for use. This important step in the brand development process will help ensure that another party has not already acquired rights in the same or similar mark in connection with overlapping goods or services. If you skip this step, you run the risk of adopting a protected trademark, which may subject your company to costly consequences. If you are found liable for trademark infringement, you may be forced to pay monetary damages in addition to the costs associated with rebranding.
Because of the potential legal implications, companies will often engage legal counsel to conduct clearance searches. However, if financial constraints prevent you from hiring a trademark attorney, legal service providers like Thompson CompuMark and CSC offer some helpful clearance tools. In addition, federal trademark applications and registrations are searchable through the United States Patent and Trademark Office (USPTO) website. At the state level, some registration records are searchable online through the applicable Secretary of State website. Finally, it is important to remember that you do not need a registration to develop rights in a trademark. Unregistered trademarks can also pose an infringement risk. Thus, the trademark clearance process should always include a robust internet search for potentially conflicting trademarks.
Bulletproofing Your Brand
Once cleared, you should strongly consider securing registrations for your trademark. Although not necessary to establish trademark rights, registration confers on the registrant certain additional rights and remedies, including by expanding the geographic scope of trademark protection..
In the United States, you cannot secure a trademark registration until you begin using your mark in connection with the sale of goods or services. However, the USPTO allows you to “reserve” trademark rights through the filing of a federal intent-to-use application. This can be an invaluable brand protection tool for companies who intend to invest heavily in the brand development process. Finally, if your company has an online presence, you should also consider securing pertinent domain names and social media usernames before you launch your brand. Attempting to reclaim these post-launch can prove difficult.
Brands are powerful assets and critical to a company’s success and longevity. Using the tools outlined, you will be well on your way to developing a strong, protectable brand.