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Pursuing strong brand

By Jeff Van Hoosear and Jason Evans of Knobbe Marten Olson & Bear LLP

This article first appeared in: ‘Brands in the Boardroom Key branding issues for senior executives’ A supplement to Intellectual Asset Management magazine www.iam-magazine.com

the more the value of your brand (and business) increases. In order for your mark to be a good brand. Whereas the trademark is the legal nature of the identity. After all. to the obvious . Jeff Van Hoosear and Jason Evans of the Orange County. every company that sells and markets its products or services can benefit from brand recognition. the mark should be a word. the speed of which is determined by the advertising the product receives.Strong brands Pursuing strong brands Not all brands are created equal. In other words. However. as discussed in further detail below. The selection of words (or images) to distinguish your product or service is one of the first steps in a branding strategy and trademark law most frequently protects such selections. However. pleasing to the eye and ear. MCDONALDS. it is equally if not more important that the mark be protectable.fireworks. As a result. some positive. GENERAL ELECTRIC. the term brand refers to the commercial nature of the identity. branding creates in that consumer the thoughts and emotions associated with the product or service. at a minimum it should be unique. Furthermore. what use is an expensive branding effort if a competitor can simply free-ride off Brands in the Boardroom 1 . The cliché “the trademark is the heart of the brand” aptly illustrates the relationship between these two concepts. MICROSOFT. a signal is sent to consumers that your company sells a product of consistent quality. But it can also be a quick process. product or service. as a result. product or service from another company. A brand is a set of distinguishing characteristics that differentiates a company. salsa and computer games. those positive expectations created by a consumer’s previous experiences with the product may be triggered by the brand and the consumer will be more likely to make a purchase. easy to remember. all these brands mean something to nearly every consumer. California offices of Knobbe Marten Olson & Bear LLP. we will ignore these slight differences to simplify our analysis. The words chosen to represent your company are often crucial to the success of your branding efforts. or set of words. The phrase SHOCK AND AWE is also the subject of 29 applications in the USPTO for goods ranging from golf clubs. But even if the market for its brands is not as big as Coca-Cola’s. Although there are some differences between a trademark (the name of a company’s product) and a service mark (the name of a company’s service). This is the power of branding. However. that you can prevent third parties from using. others not so positive. evocative of the product or service provided by the company and favourably perceived by consumers. explain why a close understanding of trademark law is essential if your brand is to have lasting value COCA-COLA. these marks may evoke a number of feelings. Coca-Cola is a good example of brand management. When Microsoft places its brand name on a particular product. As some of the world’s strongest and most valuable brands. consumers expect to receive certain qualities associated with this brand and. The company filed its US trademark application in 1892 and has consistently displayed the mark with the same script for over 110 years. When a consumer encounters these characteristics. The more consumers associate your brand with a positive association. Donald Trump only owns seven of the 29 applications presently filed for this mark in the United States Patent and Trademark Office (USPTO). as can be witnessed by the notoriety already achieved by the mark YOU’RE FIRED. simply by virtue of pursuing a branding strategy. are more or less likely to buy that product. Branding can be a slow process. ROLEX.

Obtaining such marks may also be more expensive and legal disputes concerning such marks are often longer and more expensive . the mark would more likely be considered descriptive than suggestive. courts are more likely to find trademark infringement despite the disparate markets. You should try to stay away from descriptive terms whenever possible. For example. they are in most cases immediately registrable. Fanciful marks are invented or coined words. for example. A suggestive mark makes no direct reference to the product itself or to any component. a consumer can be sure that another computer product bearing the distinctive APPLE mark was made by the same company. BLOCKBUSTER for video rental services. The primary function of trademarks is identifying the origin of the goods to which the trademark is attached. as they are inherently less distinctive. (4) descriptive. very distinctive and are therefore strongly protected in their field of use and perhaps beyond that field. In fact. can never be legally protected. marks falling into these categories become less and less distinctive. a STARBUCKS brand skateboard is also made by (or perhaps licensed by) the company that produces STARBUCKS brand coffee. use by others in different markets is more difficult to prevent. upon analysis. The cornerstone test of trademark infringement is the confusion of consumers: in other words. whereas a fanciful mark may be afforded a great deal of protection immediately. The consumer will learn to associate a trademark with a guarantee of consistency. However. characteristic. non-distinctive word COMPUTER are made by the same company. and thereby provide less and less legal protection.Strong brands of your expenditures by adopting a similar brand? The following sections provide guidance on how to choose a mark for your goods and services that will provide the most protection and how to maintain that protection as your brand becomes more well-known and important to your business. trademarks may be divided into five categories: (1) fanciful.COM for retail services and ADOBE for software. these marks are. Once a consumer experience connects the trademark with positive associations. As the identifier of the source of the product. or JAGUAR for automobiles. in the case of fanciful marks. a generic name. Since they are so uncommon and therefore distinctive. The meaning of an arbitrary mark does not apply to the product or service or any of its components. having had a positive experience with an APPLE computer. the trademark is the first connection between the consumer and the product. for example: KODAK for film. Moreover. The owners of the three marks mentioned above would most likely be successful in prohibiting use of the same mark for almost any goods or services. value is added and the stronger the brand becomes. and (5) generic. its distinctiveness often entitles it to protection in an even greater variety of fields than usual. characteristics. however. Not all products need to have a guarantee of high quality but they do need to portray a consistent quality to the consumer. as consumers are less likely to be confused by the use of the same arbitrary mark in another context. in context. Some examples of arbitrary marks are: APPLE for computers. On the other hand. However. are the marks so similar that consumers believe that the products or services bearing those marks have the same origin? For many marks. Although less original than a fanciful mark. feature or ingredient of the product. once a fanciful mark has been registered. nondistinctive by definition. Along the continuum of distinctiveness. no consumer would believe that all products bearing the generic. products in completely different fields bearing the same mark do not cause any such consumer confusion. For this and other reasons. AMAZON. a trademark must be distinctive and recognisable as a mark. as many consumers would assume that. features or ingredients. they are 2 Brands in the Boardroom very strongly protected and are immediately registrable. In increasing order. such as CUISINART for appliances. from a strictly legal perspective it is best to choose marks that fit into the two most distinctive categories fanciful or arbitrary. a trademark’s degree of distinctiveness can be used to evaluate the amount of protection the trademark will be afforded. and therefore legal protection. Some of the most powerful brands are coined terms. a connection may be made between the mark and product: if no analysis were necessary. Suggestive marks probably comprise the most frequently obtained marks. So. Some trademarks are stronger than others An understanding of trademarks is the first step in building a brand. (3) suggestive. Arbitrary marks employ real words in unfamiliar contexts. Suggestive marks are inherently registrable but are entitled to less protection than the arbitrary and fanciful marks discussed above. When deciding on a mark to represent your product or service. In order to serve this primary function. XEROX for photocopiers and VIAGRA for pharmaceuticals. Unlike a fanciful mark. (2) arbitrary.

Clearing your mark The first consideration when attempting to create a strong mark for your product or service is whether a proposed mark is available for use and registration without conflicting with the prior rights of others. in the United States. if a company could obtain a trademark in the word COMPUTER for computers. Fanciful marks are so distinctive because they mean nothing to the general public until some product or service has become associated with the words. Indeed. Other examples of generic marks are RAISIN BRAN. Brazil. The standard of availability for a mark is not whether an identical mark for identical goods or services is already being used or is already registered. The following marks are now protected. it is by no means limited to identical marks for identical goods or services. While this standard varies between countries. finding that protecting such generic terms is too anticompetitive because it prevents competitors from using a word that best describes their product. choosing a mark is often more of a balancing act between the scope of protection and the advertising and education necessary to build brand recognition. and. Finally. by design. Because such marks are far less distinctive and because they pose the anti-competitive threat of preventing others from using those descriptive words to describe their products. This is usually referred to as clearing the mark. As discussed above. it might be shown that the mark has actually acquired distinctiveness in the minds of the relevant consumers. the foreign equivalent of such a descriptive term or the misspelling of a descriptive term is afforded roughly the same level of protection. the strongest marks available are fanciful terms or arbitrary words used to describe your product. Canada and Japan). a generic term describes a general class of products or services. the standard is whether a similar mark for the same or related goods or services is being used so that the adoption of the proposed mark is likely to cause confusion among the relevant consumers. to ensure that it will be registrable and entitled to the maximum amount of protection possible. The famous example is the Chevrolet NOVA automobile: a mark that was fine for Englishspeaking countries but translates into Spanish as does not go. preferably by a legal expert. Internet searching using various search engines should also be considered a minimum requirement prior to the selection of a mark. Balancing the scope of protection Once your proposed mark has been cleared. or using the internet (as is done in many trademark offices. your use may subject your company to legal action and monetary liability for infringement and often an injunction against further use. Similarly. These problems can often be overcome. Not a good start when trying to build a brand. Australia. However. it should be further analysed. PC and YELLOW PAGES. descriptive marks are generally not registrable with the USPTO. Finally. it would invent a new vocabulary to describe its products. Do not underestimate the availability of an appropriate domain name (a topic worthy of its own chapter). these are the categories of marks that you should generally strive for to obtain a strong brand. as discussed above. such as those for the United States. This is where trademark law draws an absolute line. Referring to the example above. even after this outlay of time and advertising expenditures. in fact. such a showing usually requires the passage of a minimum of five years. the USPTO has the discretion to deny registration if it does not believe that sufficient proof of secondary meaning has been shown. If a company were concerned only with the strength of its marks. although they are. federal and (depending on the ultimate goals of the mark) international trademark records should be performed prior to any significant expenditure or development of your proposed mark.Strong brands than those involving more distinctive marks. Rather. Furthermore. This is known as secondary meaning in legal terms. A screening search of state. This initial step in clearing a mark is critical. Descriptive marks literally describe the product or some characteristic of the product. competitors could no longer efficiently describe their own computing devices. Having employed a descriptive mark for a sufficiently long time and advertised its connection with your company’s products. you cannot assume that simply because you have used it for one product or service you can extend such use to another product or service without the possibility of infringing the rights of others. The words. HONEYBAKED and SPORTS ILLUSTRATED. descriptive: SOUTHWEST AIRLINES. a linguistic check is advisable. do not Brands in the Boardroom 3 . Such searching can be done on most levels relatively quickly and inexpensively via firms that specialise in such services using trademark attorneys or agents. It is also advisable to check for non-registered uses of a mark before proceeding: this review can be done by checking the available domain names. If your proposed mark does violate someone else’s prior rights. Unfortunately. unless your mark is fanciful.

If a trademark is used incorrectly. This at least partially explains why so many companies choose the middle ground: the suggestive mark.Strong brands convey any information regarding the product or service. As with watching services. While trademark rights in the United States can be acquired with use. bold. a trademark is an adjective and should typically precede the name of the product it describes. quotation marks or stylised font. Non-use of a mark may result in its abandonment. As registration can be an expensive and timeconsuming procedure (upwards of US$1. and chosen a mark that may be effectively protected. It is also essential to monitor the internet to detect entities using your mark (or close variations). it should always be distinguishable from its surrounding materials by placing the trademark in capital letters. You must also be vigilant in protecting your mark against unauthorised use. . it is clear that descriptive and generic terms should be avoided in branding strategies. the suggestive mark is inherently registrable and. While not entitled to the same scope of protection afforded fanciful or arbitrary marks. KLEENEX and JEEP to ensure correct usage of their trademarks. The goal of a strong brand is for consumers to associate your trademark with the product or service you provide. You are probably aware of campaigns by the owners of the marks XEROX. Developing a brand can be expensive and time consuming. the more likely you have succeeded in building a strong brand. quotes. easier brand recognition. First. you should obviously 4 Brands in the Boardroom consult with your legal department on the issue of registering the mark and the necessary budget. trademarks should be used in appropriate contexts to avoid their loss. there are service firms that can provide such monitoring services at effective rates. Failure to police your mark may result in a significant loss of trademark rights even despite having a fanciful or arbitrary mark. When using your trademark. especially in unrelated markets. Many businesses quickly accept the loss of some legal protection in return for faster. However. Such services are very cost-effective ways to monitor whether others are encroaching on your brand. italics. at the same time. Yet enforcing suggestive marks can be far more difficult. Many companies will utilise watching services to monitor trademark applications to determine whether any conflicting marks are filed. the responsibilities of creating a strong brand for your company are just beginning. arbitrary marks may have associated meanings but these meanings have no bearing on the associated product or service.000 per mark per country). in many foreign countries registration of the mark is a requirement to have trademark rights. The difficulties in overcoming the presumption against descriptive trademarks are significant. The stronger consumer recognition is for your mark. use your trademark. underlined. Another essential step is to register your mark. despite the famous brand names standing for the proposition that it can be done. conveys a message to the consumer. at least initially. Finally. Thus. A strong brand benefits your business as your consumers become regular or loyal customers. A trademark should generally not be used as a noun. the same attributes that make the marks so distinctive and protectable make brand building with these marks. there is the danger that it will lose its protection. different coloured ink. a potentially expensive and timeconsuming process. a good understanding of trademark law and understanding the difference between a strong mark and a weak mark will greatly assist in your development of a strong brand. As a general rule. Similarly. Commitment to your mark Having cleared your mark. While choosing between the above options is a difficult decision that will probably be driven as much by your personal preference for a particular mark as by legal or economic considerations. regardless of whether or not it is registered.

CA 92614. Olson & Bear. Mr Evans received his JD from the University of Chicago Law School and his undergraduate degree in physics with honours from Pomona College. Martens. LLP. Riverside. He specialises in international trademark and unfair competition matters. Jason Evans Associate jevans@kmob.Biographies Knobbe Martens Olson & Bear LLP. USA Tel: +1 949 760 0404 Fax: +1 949 760 9502 Other offices: San Diego. Los Angeles.kmob.com Mr Evans is an associate with Knobbe. San Francisco. San Luis Obispo www. LLP. Brands in the Boardroom 5 . He specialises in patent and trademark prosecution. Martens. Mr Van Hoosear published a series of articles on trademark issues in both World Trade magazine and the International Trade and Business newsletter. Olson & Bear.com Jeff Van Hoosear Partner jvh@kmob. computer science and medical devices. 14th Floor. 2040 Main Street. Mr Van Hoosear has spoken extensively in the field of trademark and copyright law including presentations for the Computer Law Association/ILATID conference and AIPLA. His technical areas of expertise include physics and optics.com Mr Van Hoosear is head of the trademark department and a partner at Knobbe. Irvine.