IP Law Bulletin

STOP! Yes, stop! Before you invest in a mark, even if it is a strong mark, consider taking five preliminary steps to ensure that you won’t be banging your head against the wall again in six months.

1. Coordinate Efforts

Your executive team, marketing department, and intellectual property (IP) professionals should all work together before any new name or logo is finalized. Poor communication can lead to significant costs, which an hour or two of frank discussions can mitigate or eliminate altogether.

2. Construct Your Trademark Strategy

It is important to think about both long term and short term strategies when it comes to brand building. Do you plan to use more than one name—for example, will your marketing include both a company name and a product name? If yes, do you intend the company name or the product name to be the focus of the marketing? Apple’s “i” lines—the iPod, the iPhone, the iPad—illustrate how a company can move over time toward a product name focus.

Another thing to think about is taglines. You can’t hear “Melts in Your Mouth, Not in Your Hands” without those little candy-coated chocolates coming to mind.

You also should make sure your trademark strategy aligns with your overall business strategy. Is your main goal avoiding threats of trademark infringement? This might be true if you are a company that has a goal of being acquired in the next 2-5 years. On the other hand, you may want to keep others from using a name or certain words in your industry long term. If this is the case, different considerations should go into your branding strategy.

If you don’t consider these types of fundamental issues from the outset, you may end up with an incoherent set of marks that do little to identify the source of your products in the marketplace and could expose you to threats of litigation by competitors.

3. Conceive the Overall Design

In our previous installment, we discussed the strength of a word or “standard character” mark (e.g., descriptive, suggestive, arbitrary, fanciful). A standard character mark consists of words, letters, or numbers without any design element. A standard character mark gives the broadest protection against competitors because they will be barred from using the word or combination of numbers or letters in any form. On the other hand, if your word mark is not strong (e.g., it is merely descriptive), the United States Patent and Trademark Office (USPTO) may not accept it for registration, and you might face difficulties trying to enforce it down the road.

In lieu of, or in addition to, a standard character mark, you should consider adopting a word mark with design. The design element can include size, font, color, and logo. A few examples of well known word marks with design are:

Often times, the color and design become the source identifying feature of the brand. For example, it is unlikely that a company would be successful in implementing a mark using orange and white in the hardware store space. And UPS would have a pretty good claim against a shipping company that decided to adopt a gold and brown shield as its logo.

Perhaps you want your brand to become identifiable by a logo. A person seeing only a swoosh emblazoned on the front of a sweatshirt knows instantaneously that that sweatshirt is associated with Nike even though the word Nike is not visible. Nike is an example of a company that has been successful in being identifiable by both a brand name, and separately, a logo. One way to achieve this type of success can be to initially tie the brand name and the logo together, but eventually start distributing goods with only the logo displayed prominently. Even then, however, it can be advantageous to maintain usage of the brand name in addition to the logo.

The best case scenario is to have both a protectable word mark as well as a mark with design or logo. In this regard, when creating a brand, thought should go into each of the name, the design, and the logo.

4. Conduct a Preliminary Search

Before spending a dime on marketing materials (or lawyers), you can do some free searching on a candidate mark on your own. Start simple; type your proposed name into a search engine to see what might be out there. Certain marks may be predictable (no one would be surprised to find that there is another BUBBLES car wash nearby), but you may be surprised at how creative people are. For example, Namaste Brewing Company in Texas undoubtedly was caught off guard when it learned that Dogfish Head Craft Brewery was already brewing a Belgian-style white beer under the NAMASTE name.

Of course, an Internet search is not comprehensive and you shouldn’t get your hopes up if an Internet search turns up nothing. This is simply one easy way for you to gauge whether you are going to run into a problem right off the bat.

You can also search the USPTO website for trademark filings. The USPTO’s Trademark Electronic Search System (TESS) allows you to search applied for and registered marks and will give you information concerning the registration, class of goods, and trademark owner. The search parameters of TESS are vast, although the novice user may be best served by sticking to the “basic search” options. Further, TESS is generally better suited to searching word marks rather than logos. Again, this kind of search is limited, particularly for those without much experience using the system, and thus just because nothing of interest shows up in a TESS search doesn’t mean you should fire-up the printer just yet.

5. Consider Contacting an IP Professional

Because a preliminary search may not be comprehensive, you may want to get some practical advice from an IP professional before adopting a mark. Your IP attorney can conduct a full search. Several vendors, such as Thomson Reuters, offer broad trademark searching capabilities that are typically much more comprehensive than any preliminary search discussed above. A professional trademark search may be particularly useful to a company that intends to rely heavily on its trademark. An IP attorney can also discuss with you a strategy for developing a trademark portfolio to support your branding strategy, and counsel you about getting your mark(s) registered domestically and abroad.

In our next article, we will discuss some of the important issues related to mark registration, including where and how to file for registration.

This update was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.