7 Brand Protection Mistakes Companies Make All the Time
What is a brand?
The answer to the question depends upon whom you ask:
An advertising executive will tell you a brand is a story well told; it's your company mission, values and personality rolled into a recognizable consumer experience.
A trademarking professional is more likely to define brand as the actual trademark name or symbol representing your company, as well as the goods and services you sell.
The biggest mistake we see startups making?
Not giving equal weight to both aspects of the branding process. Ideally, your trademark should both represent your brand experience AND be unique enough to qualify for legal brand protection.
7 Brand Protection Mistakes Companies Make All the Time
As Thomas Dawson, representative of PULL branding agency, recently told Entrepreneur.com:
Naming is the most important element of a brand’s value proposition. It’s the first perception by an audience about who the brand is and what the brand represents. From day one, a brand name requires and deserves full creative consideration and legal protection.
Though it may be tempting, you can't just decide to go with a particular name because YOU like it. Your brand name must:
a). Be available in all the territories you wish to sell AND
b). Avoid likelihood of confusion against similar brands, both now and in the future.
In this article, we'll discuss seven common brand protection mistakes and how you can avoid them. Let's have a look:
1. Brainstorming Without Legal Consideration
FACT: Brand protection begins before trademark applications are ever filed. As the saying goes, the best offense is a strong defense. While sifting through naming options, it's important to blend your creative ideas with legal practicalities.
By partnering with an experienced IP attorney OR utilizing technology-assisted software you can determine candidate strength early-on. In doing so, you can avoid falling in love with a trademark that is found to be at a high-risk for trademark infringement. A variety of factors go into developing a comprehensive risk-assessment: Linguistic/phonetic similarities, alternative cultural meanings, case law precedence and litigiousness of competitive owners.
2. Not Recognizing Trademark Pros & Cons
What makes a good trademark?
- It's unique enough that it won't be confused with anything else.
- It accurately encompasses the values, mission and experience of your brand.
- It's available for use both locally and internationally (always keep expansion in mind).
When it comes to brand names, there are 5 basic types:
1. Generic: Generic brand names cannot be trademarked since they refer to entire groups or classes of products (i.e. tortilla, ice cream, laundry mat). Why would someone choose a brand name knowing it offers no legal protection? Because generic names are easily remembered by consumers and are oftentimes great marketing tools. With that said, we obviously don't recommend them!
2. Descriptive A descriptive brand is simply a descriptor or adjective put in front of a generic word. Slightly better than generic, descriptive brand names DO offer legal protection. However, that protection must be earned. Think Pizza Hut, Burger King, Holiday Inn--all well-known brands who worked hard to establish loyal followings before applying for trademark rights.
3. Suggestive: Alternatively, you have suggestive names. Similar to descriptive names these names are highly correlated with something familiar. However, they utilize the power of analogy to paint brand messaging. Think Amazon, Greyhound, or Chicken of the Sea. While these names are obviously more challenging to market, they offer greater protection.
4. Fanciful: Fanciful names are traditionally the easiest to trademark because they are created specifically for the brand in mind. Oftentimes, branding experts will draw inspiration from foreign languages, Latin root words and unusual linguistic combinations to generate something completely original. The most popular fanciful brand name in today's world? Hint: Just Google it.
5. Arbitrary: Arbitrary names are names taken from an unrelated category and re-purposed. Think Apple, Orange (mobile) and Shell. All of these names could be legally trademarked since the goods they sell are completely unrelated to what we know the names to literally represent.
3. Not Watching Trademarks After Approval
Once your mark has been approved, it's your responsibility to keep tabs on its usage. While most companies have a policy of watching "crown jewels," very few monitor all of their marks. Limited time, budget and manpower are the most often cited reasons.
The problem with such an approach? It suddenly goes from cost-effective to exceedingly expensive in the event that you discover another business has been infringing upon your mark all the way to the bank. Thankfully, today's technology-assisted watch software allows businesses to monitor entire portfolios at a glance, for a fraction of the time and cost required by traditional junk report methods.
4. Not Registering URLs & Handles on Social Media Sites
Registering a URL or on social media has zero impact unless you are using it as a trademark. The bigger danger in social media & internet is how others use it as it may become too generic to be protected anymore - i.e. Everyone says "pass the Kleenex" regardless of what brand of tissues are actually there. If it passes into very common parlance, you could lose your protection although famous brands do have some special protections.
5. Not Using Trademarks as Registered
Another common branding mistake is not using trademarks EXACTLY as registered. For example, just because your mark is registered under class 'X' doesn't mean it will automatically be protected when you go into the 'BLANK' business. For instance, clothing is Class 25, but fasteners for clothing is Class 26.
While the E.U. doesn't stringently investigate use during renewal (like the U.S. does), trademark holders should still be cognizant of using marks as registered. Otherwise, they may risk a competitor applying to have a mark canceled.
6. Failing to Correctly Respond to Threats
When responding to a trademark threat, time is of the essence. Ideally, you want to identify those using all too similar marks as quickly as possible (i.e. when someone is still in the application process). Opposing a mark is relatively straightforward. Every two weeks, the United States Patent & Trademark Office publishes all of the approved trademark applications to the Original Gazette for opposition.
You can also keep tabs on potential infringers by subscribing to a technology-assisted platform like NameWatch. You have 30 days to respond once the mark is published for opposition. In order to file an opposition, you must file a notice of opposition with the USPTO. In this notice, you must plead the grounds of your opposition and explain why the application should not register. Once you have pleaded your case on file, the applicant has 30 days to respond. The Trademark Trial & Appeal Board will set a trial calendar with the deadlines for each stage of the opposition proceeding
7. Overlooking Alternative Meanings Internationally
We've all heard the legend that is Chevy Nova. The automobile manufacturer reportedly failed big time when attempting to market the Nova in Latin America. In Spanish, "no va" literally means "Doesn't go." While the legend has since been debunked, the lesson holds true: Always check alternative word meanings in foreign cultures. Unfortunately, most word flummoxes tend to be vulgar in nature.
Thoroughly evaluate prefixes, suffixes, and synonyms of words in your priority region before moving ahead. While there is no substitute for native expertise, technology-assisted software can often bridge the gap.
Avoid Mistakes With TrademarkNow
The good news?
All of these branding mistakes are 100 percent avoidable. At TrademarkNow, we don't believe creativity should be compromised by budget, and we don't believe you should have to shuffle between a dozen different databases to get the answers you need.
Which is why our technologically-assisted search programs come with:
- Unlimited search functionality in more than XX regions.
- Customizable watch alerts for seamless portfolio management.
- Fully ranked risk assessments based on visual/phonetic similarities, alternative meanings, case law precedence and owner litigiousness.
With TrademarkNow, not only are more likely to choose "the right" names from the start, you're more likely to effectively protect those names down the road.