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Promote and protect your brand
- 1. Promote & Protect Your Brand Danielle DeFilippis Ami Bhatt Norris McLaughlin & Marcus, P.A. www.morethanyourmark.com
- 2. What is Your Brand? ● Symbols, designs, names, sounds and images – separating you from your competitor ● Why is it important – it is what you use to distinguish yourself ● Examples of strong branding – McDonald’s Golden Arches ● Aspects of your brand – includes trademark, trade dress, online and social media presence 2
- 3. What is a Trademark? The term “trademark” includes any word, name, symbol, or device, or any combination thereof— (1) used by a person, or (2) which a person has a bona fide intention to use in commerce…to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. -- Lanham Act, 15 U.S.C. s. 1127 3
- 5. Sampling of Cointreau’s Trademark and Trade Dress Registrations 5
- 6. How to Select a Brand: Consider Trademark Strength ● Fanciful – Clorox, Kodak ● Arbitrary – Apple for computers, Ivory for soap ● Suggestive – Coppertone for sun tan lotion, Chicken of the Sea for tuna ● Descriptive – Shake N’Bake, can be protected if achieves secondary meaning 6
- 7. Not All Terms Can be Trademarks ● Generic words -- i.e., cracker or computer when used to refer to relevant goods ● Merely descriptive words – “Buy Auto Parts” ● Geographically descriptive marks -- Hollywood, Big Apple ● Scandalous, disparaging or obscene marks ● Surnames – Smith, though can be protected if achieves secondary meaning 7
- 8. Trade Dress • Trade dress is the “total image and overall appearance” of a product or its packaging • Includes features such as size, shape, color or color combinations, features that affect the “total visual image by which the product is presented to customers” • May be very powerful when established over a period of time in establishing “consumer recognition” regarding a product • Must be “non-functional” • Two types: o Product labeling or packaging – may be inherently distinctive and secondary meaning not required o Product design or configuration – more difficult standard to meet; must show “secondary meaning”, i.e. the purchasing public associates the trade dress with the source, can include a website 8
- 9. Think Beyond the Mark: Domain Names ● Selecting your domain name ● What domain names to purchase ● Cybersquatting 9
- 10. Social Media ● Selecting a brand that is also available on social media, i.e., Instagram and Twitter 10
- 11. Going From Brand to Trademark ● Preliminary Clearance of Mark ● Seek Federal Registration ● Building a Portfolio of Marks 11
- 12. Acquisition of Trademark Rights ● In the U.S., trademark rights are acquired through use of the mark in commerce ● Federal registration is not required ● Common law marks however do not enjoy the benefits conferred on federally registered marks ● Trademark rights can be acquired even before use through ITU applications ● Global applications? 12
- 13. Protecting Your Brand ● Consistent and Appropriate Use ● Avoid Genericide ● Enforcement 13
- 14. Policing and Enforcement ● Monitor Usage ● Internet Searching, Watch Services ● Cease & Desist Letter ● Legal Action ● Federal Statutes – Lanham Act ● Trademark Infringement ● False Advertising ● Remedies ● Injunctive Relief ● Damages under the Lanham Act ● Cybersquatting remedies and damages 14
- 16. Other Legal Issues ● Forming LLCs for business ● Insurance coverage ● Advertising and promotion review ● Licensing 16
Editor's Notes
- A trademark is an identifier, such as a phrase, word, and/or symbol which identifies and distinguishes the source of the goods or products from those of other sources
- Word marks are the most common types of trademarks and can include anything from the business name, a brand name, a slogan. Can also include design marks which are logos or character designs that identify a source. There are some non-traditional trademarks such as color or sound. Examples include Tiffany’s blue and Target’s red, or NBC’s “Chimes” or AFLAC’s duck
- The tension between selecting a strong and distinctive mark vs. having a mark that describes the goods or services at issue
- For some of these marks, like surnames if they can secondary meaning, they eventually can receive trademark protection
- For some of these marks, like surnames if they can secondary meaning, they eventually can receive trademark protection
- For some of these marks, like surnames if they can secondary meaning, they eventually can receive trademark protection
- Portfolio of Marks – think about house marks (ie, Apple or Ford); and then the different tiers of marks – this can be iPod, Mac, or specific or regional products like Apple EarPod or iSight, or things are that are used only occasionally – like Macy’s One Day DoorBusters
- Registration on the Principal Register provides additional benefits, including: (i) a statutory presumption that (a) the mark is valid, (b) the registrant is the owner of the mark, and (c) the registrant has the exclusive right to use the registered mark; (ii) the registration is proof that the mark has acquired secondary meaning; (iii) the registration serves as constructive notice of a claim of ownership, eliminating any justification or defense of good faith adoption and use made by a third party after the registration date; (iv) the registrant is entitled to nationwide priority based on the filing date; (v) the registration becomes incontestable after five years on the Principal Register, creating conclusive evidence of the registrant’s exclusive right to use the mark, subject to certain statutory defenses; (vi) use of U.S. Customs to stop the import of infringing goods. With ITU applications and products that are pre-launch, think about how goods might change from concept to market. Want to register the marks where you are currently and where you may be in 5 years
- Use of TM v. R symbol Use of fonts or stylization to set mark apart Ensure proper use online and in social media as well Use mark as an adjective not as a noun; Famous marks that are not generics – Aspirin (for acetylsalicylic acid); Escalator (moving stairway); Zipper. Enforcement can make a difference – Xerox still has a protectible trademark as it made an effort (including full page ad in the NYT) reminding consumers
- Use of TM v. R symbol Use of fonts or stylization to set mark apart Ensure proper use online and in social media as well Use mark as an adjective not as a noun; Famous marks that are not generics – Aspirin (for acetylsalicylic acid); Escalator (moving stairway); Zipper. Enforcement can make a difference – Xerox still has a protectible trademark as it made an effort (including full page ad in the NYT) reminding consumers