Having joined TrademarkNow a few months ago to do marketing, this is a good time to reflect on some of the things I have learned about trademarks along the way. And definitely some of the things every marketer involved with brands (i.e. everyone!) should keep in mind and realize.
To give you a better understanding of what is to follow, my background is in marketing. Sure, I “know” what trademarks are and I have grown used to working with companies owning one or several of them. However, being fully immersed in the trademark world for these first few months has been an eye-opening experience, and made me realize how little I really knew about trademarks.
So here is my crash course list on trademarks for every marketer out there. Whenever you talk to legal about clearing the next new brand you have come up with, try to remember these things.
1. ™ vs Ⓡ
The ™ and Ⓡ symbols are not synonymous to each other. Yes, they share plenty of commonalities, but the reasons as to when and why use them differ. Generally speaking, the Ⓡ symbol can be used only with actual registered names, logos and slogans. ™ on other hand, can be used for any products and services, even when they are not registered trademarks yet. ™ works in a way as a “pre-booking” for the trademark. It is there to tell you that name, logo or slogan is in being registered, or the very least the owner has an intent to take the registration forward.
So why wouldn’t a company just register brands and use the Ⓡ symbol for everything? In the case you cannot get a registered trademark because of descriptiveness, using ™ together with the brand can work as a deterrent to others possibly thinking of using the same name. There are also plenty of other reason to use the ™ symbol.
2. Genericizing your brand
Have you ever “xeroxed” something and your copy machine is not actually a Xerox, or ‘hoovered’ your home with a vacuum cleaner that wasn’t a ‘Hoover’? As marketers, we do not think too much of this. As a matter of fact, it can be the ultimate wet dream of some marketers; to create a brand that becomes so synonymous with the category that people start using the brand name for it.
Sounds amazing, doesn’t it? Not really, to be honest. While you would still have rights to your trademark and every right to defend it, eroding your brand like this can make it significantly more difficult for you to do so. If a brand becomes an everyday word, it turns descriptive which is the opposite of distinct. And being distinct is one of the key factors in assessing a trademark’s strength.
3. How many things affect likelihood of confusion
Trademark strength brings us to likelihood of confusion. Previously, I thought it is enough that trademarks do not use the same name, look at least slightly different, and we are good to go. Not so simple, I am afraid.
Numerous factors influence whether a trademark application will be approved or not. In addition, there’s still a bit of room for subjective interpretation. Overall, the factors are easy to understand and make perfect sense. Marketers just rarely pay any attention to them.
4. How much work is actually involved
Creative process in building a brand with a name, logo and a slogan takes a long time. But how about the legal aspects of actually registering one? I used to believe it was merely a matter of filling out some papers and submitting them to the PTO. Oh, how wrong was I.
Clearing a trademark takes some serious work starting with simple knockout searches, then full, comprehensive clearance searches to make sure the brand name you’ve come up with is actually valid for a new brand name. In the worst case, that clearance search can take days or even weeks. With our NameCheck clearance tool, you can get it done in just 15 seconds.
5. Nice classes, what are those?
Alright, I have to admit I was probably among the more ignorant marketers since I had never even heard of Nice classes. In case you are in the same group as I am, here is a brief explanation.
Nice classification is a system which works as an international allocation of goods and services in relation to the registration of marks. The purpose of the system is to make it easier to reference a particular trademark to its purpose of use. There are 45 different classes and the system is recognized virtually across the globe.
6. Every country has it different, especially China
Even though Nice classes are unilateral everywhere, each country still has its own peculiarities when it comes to application procedures, opposition periods, renewals, grace periods and a lot of other things. I won’t even get into all the details there, but China is worth mentioning in this respect. The Chinese trademark system is, if not the most, then among the most complex in the world. Even Nice classes are taken to a new level with subclasses. Be sure to read more on that if you are doing business there.
7. Do come up with brands that make no sense
And by this I mean brand names that are fanciful and do not necessarily mean anything as they make up for the strongest brand names. Think about it; some of the most known brands in the world are just strange words.
For example, Google, Pepsi or Lululemon don’t mean a whole lot of anything. Yet they are strong and recognized brands all across the world. That just means their marketing is really good and spot on as they have managed to turn indecipherable words to something we all can recognize. Isn’t that the true measure of great branding?
To round up, trademarks are fascinating and every marketer should stay up-to-date as to what happens in this world. After all, it has a massive effect on the brands we are building.