Legal Matters | Archive

Protecting your brands is important for business success

by David Zerbee
for Virginia Business
September 1, 2007

Establishing a strong brand is pivotal to business success. Protecting that brand is equally important. Yet many small businesses overlook an important first step in securing their brand: trademarks.

What can be trademarked?
A trademark is any unique word, symbol, name or device used to identify and distinguish the goods of one seller from those of another - think Nike's swoosh, for example. A trademark allows the seller to protect what's trademarked from use and/or misuse by competitors while building brand loyalty among repeat customers. Trademarks also help prevent confusion or manipulation of consumers, who come to associate distinct attributes--in particular, quality--with a distinct brand.

From a branding perspective, the following are assets that can be protected: logos, names, tag lines and packaging. However, these assets can only be trademarked if they meet certain qualifications. A word or phrase that's commonly used or already connected with another product or service in the same industry cannot be trademarked. For example, a generic term like "search engine" can't be trademarked, but a unique name, like Google, can be. However, if your name is generic but used in an industry not typically related to the meaning of the term, you may be able to trademark it. A good example would be Apple Computer.

As a general rule, you can trademark your business name if you use it when advertising directly to your customers. If you don't use your business name in direct communication with your customers, you probably can't, because you're not connecting your name to your brand and its attributes. If your business name will be a large part of your marketing, you should consider trademarking it.

Your logo and tag line are also good candidates for trademarks. The first litmus test: Is it unique? What makes a logo unique is the combination of the symbol with the company name, their spatial relationship and the logo's colors. If your tag line is a unique phrase, it can also be trademarked. Hallmark's "When you care enough to send the very best" connects a Hallmark brand attribute-quality - -to its product. This tagline helps distinguish the Hallmark brand.

The trademark process
It's not necessarily expensive to trademark something. In the United States, whoever establishes priority in a mark is usually considered the owner of it. In other words, if you're the first company to use a unique mark to identify your products or services, you don't need to register your mark to gain rights to it. You must, however, add the trademark symbol, TM, to the mark you're claiming rights to. It's still not quite a substitute to registering a mark through the U.S. Patent and Trademark Office, which establishes ownership beyond a doubt.

Of course, all of this is dependent on the "uniqueness" of your mark. The Internet is a good source for starting your trademark search. Visit free Web sites that display existing trademarks, like those maintained by USPTO, Secretaries of State or Yellow Pages online. A final, more comprehensive search that include misspellings and alternate spellings should be conducted. It's best to seek assistance from an attorney who specializes in intellectual property law.

Trademarks can be registered at the state or federal level. State registrations are less expensive, but also offer less protection. Trademarks are often registered within one industry, but may be registered in more than one. Your best option depends on your geographic area of operation and scope of business. International protection is much more costly and difficult. It's also extremely complicated and expensive to enforce.

If you file a trademark application with USPTO, it'll ensure no other trademarks similar to yours currently exist. This process can take months. Do your homework and an experience intellectual property attorney should be able to assist, because if your mark closely resembles someone else's, your application will be denied.

Keep in mind that the more you differentiate your brand from others in your industry, the easier it will be to protect. Choose a name and logo that distinctly identify your business and will protect it from competitors.

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David Zerbee is a business attorney in the Herndon offices of Executive Counsel, PLC, a business law firm that is composed primarily of former corporate general counsel. He can be reached at dzerbee@exec-counsel.com.

Next month, Richard Kay of Executive Counsel's Richmond offices will write on the benefits of using confidentiality agreements.