IP for Startups and Entrepreneurs. Part 2: Trademarks and Branding

Trademarks and Branding

Applying for a trademark registration with the U.S. Patent and Trademark Office is often overlooked by entrepreneurs and startups.  Protecting your business’s name and logo through federal trademark registration provides numerous benefits to you, such as the following:

• Public notice of your claim of ownership of the mark;
• A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
• The ability to bring an action concerning the mark in federal court;
• The use of the U.S. registration as a basis to obtain registration in foreign countries;
• The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
• The right to use the federal registration symbol ® and
• Listing in the United States Patent and Trademark Office’s online databases

Trademarks are also important tools for branding. A registered trademark may become a valuable asset for your business because it helps identify your business as the source of certain goods or services and become meaningful in the minds of consumers.  Think about “Coca Cola”, “Exxon” or “Nike.”  These names are not simply corporate names — each name carries with it a certain connotation and feeling (even if negative).

Even after obtaining a trademark registration, many entrepreneurs and startups fail to take the additional steps required to actually develop a brand. Proper branding requires handling the trademark due diligence and registration process carefully to ensure, among other things, that the marks are sufficiently distinctive, do not infringe the rights of third parties, are properly safeguarded with adequate quality control protections, and that policies are in place to protect domain names and online marks. But brand development is a larger process that requires intangible considerations aside from those issues.

Branding and Trade Dress

Branding must be a creative process in order to unify your company’s various elements. Websites, logos, slogans, product packaging, stationery, business cards, color schemes, typefaces and marketing materials should speak with one voice, complement each other and be used consistently. For example, your stationary should complement your website.  Your business cards should complement your office wallpaper.

A successful brand identity conveys a specific message and personality to the public. An accounting firm, for example, may want subtle colors, straight lines, and legible serif typefaces in order to convey an air of sophistication and professionalism to prospective clients. On the other hand, a cutting-edge Internet company vying for a slice of the millennial generation’s business may choose brighter colors, edgier graphics, and an informal sans serif typeface in order to appear young and current. (Of course, the opposite may also be true — the accounting firm may want to target a younger clientele, and the Internet company may see opportunity in an untapped tech-adverse market.)

These design elements are protectable under trademark law.  If, taken together as a whole, the elements are sufficiently distinctive, they may be protected under the Lanham Act as trade dress. “The concept of ‘trade dress’… refers to the total image of a product and may include features such as size, shape, color, color combinations, texture or graphics.” Apple Inc. v. Samsung Electronics Co. Ltd., 768 F. Supp. 2d 1040, 1045 (N.D. Cal. 2011).  To enforce trade dress in court, you must be prepared to prove that your trade dress is (1) nonfunctional; (2) either inherently distinctive or has acquired a secondary meaning; and (3) likely to be confused with the defendant’s products by consumers.”

Families of Marks

Another useful tool under trademark law is creating a family of trademarks.  Apple accomplished this with its “i”-related products, such as iPhone, iPod, iMac and iPad.   Similarly, McDonalds created a food-related Mc-family with its McNuggets, McRib, Egg McMuffin and Big Mac, to name a few.  A “family of marks” is defined as “a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner.” J&J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460 (Fed. Cir. 1991).

The question is not whether you have adopted and used (or even registered) a group of marks with a common feature, but whether consumers recognize that the family “surname” is indicative of a common origin of the goods or services.

The family of marks doctrine is a useful and effective way to unify seemingly unrelated products. However, it is important to note that families of marks are not easily created, and courts will not always recognize families of marks. Your trademark attorney must prove that the common element is inherently distinctive, or that it has acquired distinctiveness thorough secondary meaning.

What other creative ways of branding can you think of?  How might those methods be protected by the law?