How to Help Your Client Select and Protect a New Brand
By: Keely Herrick, Parks IP Law, Atlanta, Georgia
In the branding arena, the battle royale is generally between marketing teams, who prefer brands that are somewhat descriptive and easier to communicate, and trademark attorneys, who prefer unique, coined terms that are easier to protect. Often, corporate and in-house attorneys find themselves caught in the middle of this tug-of-war, trying to balance the needs of each side. In addition to a significant amount of frustration, at risk may be a substantial financial investment in a brand that ultimately ends up abandoned due to a trademark dispute. There are ways to help the marketing team issue-spot potential problems and streamline this process so that it runs more smoothly.
Conduct an Internet Search
One of the primary concerns of adopting a new brand is to make sure that it is not confusingly similar to an existing brand already in use for similar products. In today’s global economy, one can often find competitive products online by conducting a simple Internet search. If there is a product available online to consumers in your geographic area using the exact same mark for the same products, it’s probably best to choose another brand before investing time and resources into developing that name. Of course, it’s generally not that cut and dry, and you may be unsure as to whether a particular existing product name or the nature of the goods is similar enough to raise a problem. In that situation, an Internet search is still helpful because you can call that product to the attention of your trademark counsel and help to speed up the process.
Not all Attention is Positive
One of the hot-button issues in trademark law at the moment is the question of whether a mark is too scandalous or inappropriate to be registered in the United States Patent and Trademark Office (“PTO”). The most familiar brand dealing with this dispute is currently the Washington Redskins, but there are several other brands where taste is at issue, including MH17, STALIN COOKIES!, and MOLLY WATER. Marketing teams may see brands like these as opportunities to gain attention quickly for the underlying product, but the PTO may reject an application for a term that, in its view, fails to function as a trademark or contains scandalous material.
In the matter of the MH17 application, the PTO has rejected the application, stating that the mark (a reference to the Malaysian Airlines flight) does not identify the source of the underlying video game products and may confuse consumers into believing that the airline is the source of the games. The STALIN COOKIES! COOKIES THAT RULE! Application was allowed for registration despite the reference to an unsavory political figure, but the applicant allowed the application to go abandoned. The applicant in the MOLLY WATER matter is currently appealing the PTO’s rejection of that application on the basis that MOLLY WATER is a reference to the practice of consuming the illegal drug ecstasy with water and is therefore too scandalous to be approved for registration as a trademark. In a similar matter outside of the U.S., a Swiss coffee company has recently suffered backlash from using images of Hitler and Mussolini on packaging.
The lesson from these matters is that, in all events, selection of a mark that is of questionable taste is likely to result in increased attorneys’ fees and public disapproval. If the PTO deems a proposed mark to be unsuitable for protection as a trademark, the user of the mark will also have a much more difficult time in enforcing any common law rights against third parties using similar marks. Therefore, even if one is able to overcome a negative public reaction, the brand itself may be ultimately unprotectable, which is an important consideration when determining the amount of time and effort to invest in a new product.
Think Outside the World of Words
If your marketing team is leaning toward brands which are less distinctive and more descriptive, consider adding graphic elements or stylizations which may help to make the brand more unique. The Nike Swoosh and the Adidas three stripes are examples of instantly recognizable design elements that function as trademarks without the use of words. Sounds may also be appropriate trademarks, as in the case of the Intel sound trademark and the MGM lion roar. Color is another distinguishing element, as Louboutin stilettos are instantly recognizable from their red soles. The addition of one or more of these elements to a potential trademark can increase its chances of success in being registered and protected, provided that the mark is ultimately used in the manner in which it is presented. One of the ways to speed up the trademark clearance process is to present trademark counsel with one or more options including a graphic element in order to work with the counsel to develop the best protection strategy for the mark.
Finally, consider your marketing contacts and your trademark counsel as players on the same team. It’s often helpful to have periodic meetings between these two parties in order to foster the most efficient communication.
Keely Herrick focuses her intellectual property practice on trademark and copyright law, including domestic and global prosecution, enforcement, trademark infringement, licensing, and domain name matters. She practiced for eight years in New York before returning to her hometown of Atlanta and joining the Parks Wood boutique.