Top Four Legal Considerations in Branding

Jan 20

A tablet on a desk in front of a computer screen showing images of colors and shapes — Photo by Balázs Kétyi

One of our goals when working with new business clients is to help them approach their branding from a legal perspective. The legal aspects of branding are just as important as the marketability of the brand. What is the point of marketing something that is not legally protectable?

Today’s article focuses on the top four things you need to know before deciding on a brand name.

YOUR BRANDING MUST BE DISTINCTIVE

Not everything is eligible for trademark protection. Generic or descriptive names are not going to qualify for trademark protection. From a legal standpoint that means you won’t obtain federal protection for your brand name. Practically speaking, that means someone else may be able to come along and use a similar or the same name for their business.

“Generic and descriptive names do not qualify for trademark protection. You really need to get creative when it comes to branding your business and products. Not just for marketing reasons, but so you can get the protection your brand needs.”

Generic and descriptive names do not qualify for trademark protection. You really need to get creative when it comes to branding your business and products. Not just for marketing reasons, but so you can get the protection your brand needs.

From a legal and policy standpoint, we don’t allow generic words like “sandwich” or “purse” to be registered trademarks on their own. It would not make any sense for one company to have the rights to a commonly used term, as this could put a damper on the competitive market. I know it is enticing to use a name that helps the consumer easily understand what it is you do and sell, but from a trademark perspective it is generally not a good idea.

Your brand or trademarks should be suggestive, arbitrary, or fanciful. This, of course, is relative to what it is your business does and provides. While you will likely spend more money marketing and creating the connection between the name and your company in the minds of consumers, it makes your brand more unique, and allows you to have the strongest legal protection in the name.

FIRST TO USE THEIR MARK WINS

The United States is a first to use jurisdiction. This means that the first person to use the trademark in commerce (connected with the sale of goods or services) gains the rights to use that mark. There are caveats to this, of course, but the general idea is that you want to be the first to use a trademark. And, if you’ve fallen in love with a brand name and see someone else is already using it, running to the United States Patent and Trademark Office to file for trademark registration will not give you sole rights in the name.

What qualifies for use in commerce will depend on your offering. But, at this point, you can apply for your trademark, and you probably should. There are some caveats to that as well, so this is a good time to get with your attorney and determine what the next steps should be.

IT IS NOT ABOUT WHAT YOU THINK. IT IS ABOUT WHAT THE CONSUMER THINKS

You found a name you love. You perform a Google search and find that it’s taken. So, you think, you might just change one letter and you’re good to go. Unfortunately, under trademark law that is not exactly how it works. While, every now and then, a slight change can create a totally different commercial impression, it’s rare. The test for trademark infringement is whether the use of the trademark is likely to cause a large enough number of consumers to be confused about the source the goods or services. So, while brainstorming a brand name, your concern must be whether the consuming public would confuse your brand for another.

It isn’t about what you think or feel about a brand name. It is all about the consuming public. Step into their shoes. Put your brand on the shelf next to all the others and ensure that you stand out!

LAST BUT NOT LEAST, USE THE PROPER SYMBOLS WITH YOUR BRANDING

Symbols? You know the ™ or the ®, and you should use these when using your newly chosen brand name. The ™ should be used immediately — it denotes that you don’t yet have a federal trademark registration in place, but that you are serious about protecting your brand and your marks. Most people don’t necessarily know the difference between the two symbols, and using the TM can act as a warning sign to other businesses and brands. It is likely to steer people away from using anything that is like your brand name simply because they don’t understand the ™. Once you’ve secured a federal trademark registration from the United States Patent and Trademark Office, you can begin to use the ® . The “R” stands for registration, so don’t use it until you have that registration certificate.