It is important to start thinking about legal protections for your brand while you are creating it. In a sea of entrepreneurs, your brand is going to be the thing that sets you apart from others, and attracts clients or buyers to your door (or email inbox). And, at some point, you want to own it.
They can own a business. You should own a brand.
Now, for the legal stuff.
Before you can even think about registering a trademark, you have to understand the basics. Not any random word or symbol can be registered as a trademark. A trademark commonly refers to a name, slogan, brand, logo, or combination of, that identifies the source of a good or service (sound and color are less common forms of trademarks). The most important words in that sentence are….
identifies the source.
The last thing you want is just a cute brand.
The United States Patent and Trademark Office has a group of attorneys working for them called Examining Attorneys. These attorneys are responsible for reviewing and analyzing each and every trademark application that comes through their system. They analyze the trademark according to criteria pursuant to the Lanham Act, the federal trademark statute. If your trademark, does not meet the criteria then guess what…
Owning a trademark is not a right. It is a privilege.
Now that you know that none of us are entitled to a trademark for our brands, let’s talk about criteria that you need to keep in mind as you develop your brand.
Is your logo/tagline/brand name unique?
A trademark cannot create a “likelihood of confusion” with another mark. The likelihood of confusion test is not based upon your personal opinion, what the general public is likely to think. If the public is likely to mistake your trademark for another then it probably creates a likelihood of confusion. Some of the factors that the USPTO will consider to determine whether there is a likelihood of confusion are:
- similarity in appearance, phonetics (sound), and commercial impression
- similarity in trade channels (brick and mortar distribution v. online)
- the relatedness of the goods or services
While developing your brand keep these things in mind. An attorney will be able to conduct a more sophisticated analysis, but you can do a preliminary test on your own. Think back to the McDonalds v. McDowell example…
Let me give you another example.
“Well, I googled the name I want and there isn’t a Queen Bee brand out there, but there is a Queen B. There isn’t another Artworks, but there is an ArtWerks.”
On the surface, these are clearly two brand names that are similar in sound. It doesn’t matter that you’ve added an “e.” The Examining Attorneys don’t care because the law specifically provides that a trademark cannot confused folks (well, I paraphrased).
Does your logo/tagline/brand name simply describe what you do or sell?
A trademark cannot merely describe your good or service. Specifically, it cannot primarily describe an ingredient, quality, characteristic, function, feature, or purpose. Remember, what I said earlier? A trademark identifies the source. If your brand name pretty much just tells the public what you do, think about how you can tweak the name. If you are dead set on keeping it, then definitely consult with an attorney who has trademark experience to walk you through alternate strategies.
Does your logo/tagline/brand name primarily describe a geographic location?
Again, the USPTO will refuse your registration if your logo/tagline/brand name:
- Includes a geographic location as a primary feature
- Buyers would think that the goods or services come from the place identified in it
- It actually identifies the geographic origin of the goods or services
Now, there are other options to provide limited protection under this scenario. For example, you might be able to register the logo, but not standard character (the words). The problem here is that you have a trademark for the design only. If someone uses the name of your brand in a different font, color, image then you are SOL.
Here is an example of a descriptive brand that is limited to protection of its logo as a trademark:
The trademark owner had to disclaim “Chicago’s”, “Chicken & Waffles” and “Established 2008” which means that they don’t own those words beyond the way that it’s shown above in the logo. Additionally, as explained above, they own the trademark for the specific design.
Is your brand name your name?
This one is the easiest of all. Basically, you cannot just register your surname as a trademark just because. You must demonstrate commercial significance of the mark – that you’ve been using it “openly and continuously” as it pertains to your good and service for quite some time. The burden of proof is typically pretty high for this criteria. If your brand name is your surname, just know that you might be able to get it registered, it will just take some time. The best thing that you can do is to really put it out there for your good and service, and go hard.
Are you in the process of developing your brand? Are these tips helpful?