Top 3 Things to Remember About Trademarks in Branding
As a marketing professional, your business relies on you to lead it in the right direction when creating and maintaining a strong brand. But unfortunately, sometimes marketers move forward with naming and other marketing activities without raising questions about trademarks. And if you aren’t raising trademark questions, you may be inadvertently taking your business down a scary (and potentially legally treacherous) path.
To help your business build the strongest brand possible, it’s important that the “trademark clearance” and “federal trademark registration” processes are part of your branding roadmap. By enlisting the services of a trademark attorney as part of the branding process, you will be proactively safeguarding the brand you are working so hard to build.
Let’s take a look at the three most important things marketers need to remember about trademarks when you’re in the process of developing a brand.
1. It’s Vitally Important to Choose a Unique Name
To increase your business’ chances of successfully obtaining trademark protection for your company’s name or the names of your products or services, it’s important that you recommend a name that's unique within your industry, and that isn’t so generic it could be applied to any number of competing businesses.
For example, Steve Jobs was able to gain a trademark for the “Apple” name brand in the computer industry — because apples and computers are not intrinsically linked — but if he had applied for the “Apple” trademark as the owner of a fruit juice factory, he would’ve been turned down.
Similarly, if your sunglass and accessories company tried to obtain a trademark for the name “Shade Sunglasses” for a new line of sunglasses, you’d likely face an uphill battle, as it's too generic and could apply to many others in the sunglasses industry. But you may be able to obtain trademark registration with a more unique name, like “Moxie Shades,” because it contains the somewhat fanciful term that the average person doesn’t automatically associate with the sunglasses industry.
An attorney can provide guidance on selecting a name that is strong from a trademark point-of-view, and can also give advice on the types of names to avoid.
2. You Should Focus Trademark Budgets on Words First
If you’re like many marketers, you spent a good amount of time coming up with your brand’s logo — one which offers a visually striking way to recognize your brand. But when it comes to obtaining trademark protection, a trademark attorney will insist that your brand name is more important than your logo, and should be protected first. Why? Because obtaining a trademark for your brand name alone will give you the broadest level of protection possible, while obtaining a trademark for your logo only protects you when you are using that exact graphic combination.
Think about it like this: Imagine you’ve developed a great logo for your business “Journey Technology Partners” that employs a bright red font and includes a small illustration of a road underneath. Your business files a trademark application and then receives federal approval on it, so you’re set, right? Not necessarily.
If you anticipate trademark protection for the name “Journey Technology Partners” when it’s in simple written form, you’ll be disappointed to realize that won’t be the case. And if your boss comes back to you in five years wanting an updated logo, you will need to file a completely new trademark application to receive protection for your updated logo.
Don’t be surprised if/when your trademark attorney suggests you focus on gaining federal registration for your name before going through the process for your logo. By investing in trademark protection for your name on its own, you’ll have the flexibility of using that name — regardless of its graphic treatment — with the expectation of being protected.
3. Don’t Bet the Whole Brand on a DIY Trademark Search
As you’re brainstorming brand names for your new product launch, you’ll probably do a quick Google search or even visit the United States Patent and Trademark Office website to see if the name you’re considering already has a trademark. But don’t make the mistake of thinking that even your most exhaustive search is sufficient. The reality is that this is a task that is best handled by the professionals.
For example: Imagine that you’re launching a new line of accessories and you’ve decided that the name “Sunglasses, Etc.” is a winner. You do a quick search on the USPTO website and nothing comes up, leading you to believe that the name is “available” and therefore, without potential issues. But what your search didn’t reveal is that there is an existing trademark for a competing brand called “Sunglasses Etcetera,” and if your business starts using the name, you’ll be infringing on the other business’ name—and could have to go through a time-consuming and expensive rebrand, or may even be responsible for damages.
Before settling on a name, insist your business employ the services of a trademark attorney to perform a comprehensive search on your behalf. In addition to having real-world experience that can help search for both exact names and names that the USPTO may deem “confusingly similar,” a qualified trademark attorney also has access to professional-grade software that allows for a much more comprehensive search than you could ever perform on your own.
Add the Trademark Process to Your Branding Roadmap
As you’re developing your branding strategy, ensure that you leave room in the branding roadmap for the trademark application process. Work with a trademark attorney to choose a unique name for your product or service, then let the attorney do a comprehensive search to ensure you don’t end up with any unwelcome naming surprises. And understand the legal importance of applying for a trademark for a name before a logo.
By following these tips, your business will benefit from a brand that is strong in the marketplace and, if necessary, in a court of law.
Josh Gerben is U.S. trademark attorney and principal of Gerben Law Firm in Washington, D.C. Named the No. 3 U.S. trademark filer in 2009 by Trademark Insider, Josh has represented clients in more than 5,000 trademark filings with the United States Patent and Trademark Office. Josh has been a featured panelist on FOX News and has provided insights and opinions to a variety of national news outlets, including The Wall Street Journal and NPR. Learn more about trademarks on Gerben Law Firm’s blog.