Chapter 17

Defending Your Brand Legally and through Careful Usage

In This Chapter

Calling dibs on your brand identity

Claiming your brand legally

Protecting your brand with usage rules

For all their strengths, brands are vulnerable. They’re susceptible to infringement by competitors who use disarmingly similar names or logos. Plus they’re open to attack by friends and foes alike, who intentionally or innocently mess with your brand’s identity and erode your brand strength in the process.

The reasons to protect your brand are many, but none tops the fact that when brands undergo competitive attack or weak management, marketplace confusion follows. And marketplace confusion is a high-risk condition for most brands.

This chapter helps you fortify your brand in two ways. First, it details how to take preemptive action by registering your brand identity so that others can’t use it — or so you can take legal action if they do. Second, it lays out a plan for managing the presentation of your brand, beginning with usage guidelines and ending with usage enforcement.

Strong brands thrive under the careful watch of brand owners who never blink and who never turn a blind eye to brand management mishaps or transgressions. The old line “You snooze, you lose” could have been written as advice for brand managers. Vigilance is a prescription for brand strength and an antidote for brand erosion.

Immunizing Your Brand with Government Filings and Trademarks

The extent to which you protect your name legally depends on the size of your business, the size of your market area, and the vision you hold for your business. If you think that someday your brand will span state or national borders — or if you think that someday you may want to sell it to someone with aspirations of developing it into a national or global name — you should put every form of legal protection in place, the sooner the better.

The best time to protect your brand name is when you name your business, because your business name is likely to become your brand name, too. Turn to Chapter 7 for advice for choosing a name, screening to see that it isn’t already in use, and registering it so it’s unavailable to others.

The most common methods of name protection are

• Filing your business name with local government offices
• Establishing a trademark

Use the next sections as you proceed on both fronts.

Registering your name with local government offices

As you name your business, either you’ll choose a name that includes the owners’ legal surnames along with a description of the business or you’ll choose what’s called a fictitious or assumed name, which features a name other than your true name. In either case, filing your name with the right local government office is a necessary step. The process is straightforward and relatively easy.

Registering a business using the owners’ legal surnames

If your business name includes the legal surname of each owner along with a generic description of your business (for instance, Smith, Jones, and Peterson Insurance), follow these steps:

1. Find out where the database of registered business names is maintained in your state or region.

   Contact the office of your county clerk or your secretary of state for help, or ask your attorney or accountant for instructions. Your banker can also point you in the right direction because financial institutions require name registration information when opening business accounts.

2. Register your business name by completing a form and paying a fee.

   When you’re doing business under your legal name (such as John Johnson Plumbing), a name search isn’t necessary. Simply register your name and open your business. But if you add a phrase such as “and Sons” or “and Associates” to your legal name (for example, John Johnson and Sons Plumbing), you need to register it as a fictitious or assumed name as described in the next set of steps because the name suggests that other owners are also involved.

Registering a fictitious or assumed name

Fictitious names or assumed names require registration following these steps:

1. Confirm that no competing business has staked claim to the name you want.

   Request a search of the assumed names database in all jurisdictions (usually that means counties) in which you want to register your name. Begin with the jurisdiction where your business is located and then add jurisdictions that cover each market area you plan to serve. Also consider searching the jurisdictions that cover the heaviest population areas of your state or region in case you want to expand into those areas.

   If the search reveals that your desired brand name is already in use by another business, head back to the drawing board, turning to Chapter 7 for naming advice.

2. Register the name.

   If the name you want is available, grab it. Fill out the forms and pay the required fees to register the name in your home region and in each region you plan to do business. Consider also registering the name in the regions that include your market area’s greatest population counts to further protect it from use by competing businesses.

Obtaining a trademark

In the U.S., if your business serves only one state, you can inquire with the office of your secretary of state about a state trademark that prevents others from using a similar mark in your statewide area. However, the process for obtaining a state trademark includes no search of other state or federal registrations; therefore, your right to use a state mark could be preempted by discovery of prior use by a trademark owner with a federal registration.

A federal trademark provides broader protection than a state trademark and is important if your business serves or plans to serve a market area that crosses state or national borders. (A federal trademark is called a service mark if it protects the brand of a service rather than a tangible item.)

The process of obtaining a federal trademark is long, tricky, and important for two reasons:

• A federal trademark protects your brand identity from use by others.
• The process of obtaining a federal trademark steers you clear of the legal hot water that awaits if you obliviously try to use an already-trademarked name, logo, tagline, or other identifying brand element.

To obtain a federal trademark, plan to take these steps:

1. Determine whether the brand identity you want to trademark is already in use as an established trademark.

   Conduct a preliminary online search of the database maintained by the U.S. Patent and Trademark Office (USPTO). Go to www.uspto.gov, click on Trademarks, click on Trademark Search, and follow the instructions. (For information on international trademark protection, go to www.uspto.gov/main/profiles/international.htm.)

2. If your desired brand identity appears to be available, hire an attorney who specializes in trademarks to conduct a more extensive search.

   Don’t try to proceed on your own; the trademark process requires professional expertise. (You can find details of the steps and costs involved in this extensive brand-identity search in Chapter 7.)

3. If you get a green light from your attorney, move to secure a trademark as quickly as you can.

   Establish your trademark through what’s called common-law usage (see the next section) or through the rigorous process of obtaining a more-official and protective registered trademark (see the section “Obtaining a registered trademark” later in this chapter).

Trademarking through common-law usage

After you determine that the brand name, logo, tagline, or other identifying element that you want to protect isn’t already protected, begin to establish a common-law trademark by using the letters TM in superscript (or SM if you’re establishing a service mark) alongside the mark you’re protecting. In the United States and countries with similar legal systems, announcing your trademark or service mark claim in this way lets you begin to accrue trademark rights through common-law usage.

In taking the common-law approach, be aware of these shortcomings:

• Common-law trademark protection is limited to the geographic areas in which your mark has actually been used.
• You don’t have the protection of a federal registration if another party were to dispute your claim to your trademark.
• By using the trademark without undergoing the rigorous search and analysis of a formal trademark application, you may be liable for infringing upon someone else’s registered mark. Even after your attorney screens and conducts a detailed risk analysis for your name, additional infringement issues can arise during the trademark application process that preclude your usage of the mark, which is why federal registration is the ultimate form of trademark protection.

Obtaining a registered trademark

To obtain a federally registered trademark, follow the steps described in the beginning of this section and in Chapter 7. The federal trademark process provides an especially important protection if you conduct or plan to conduct business across state or national borders. For information on federally registered trademarks, count on these resources:

• For information on U.S. trademarks, turn to the USPTO website at www.uspto.gov.
• For information on obtaining trademarks in a number of countries through a single registration, visit the World Intellectual Property Organization at www.wipo.int or go to the international property section of the USPTO website at www.uspto.gov/main/profiles/international.htm.

Use the trademark designations TM or SM, in superscript, until your trademark is formally issued by the USPTO, at which time you can begin using the designation ®. Don’t jump the gun and use the registered mark before your federal trademark is granted. Doing so is called false use and can result in denial of your federal registration.

As soon as you receive your federal trademark, give notice of your trademark in at least one prominent place in every brand communication:

• Use the symbol ® presented in superscript to the right of the trademarked name or symbol.
• Include Registered, U.S. Patent and Trademark Office (or the abbreviation Reg. U.S. Pat. & Tm. Off.), either in addition to or instead of the ® symbol.

Maintaining your trademark registration

After you obtain a trademark registration, kick your trademark protection efforts into high gear. If you don’t, your trademark and all the work you put into obtaining it can fly right out the window.

Use it or abandon it

When you apply to register a trademark, the USPTO requires you to list the specific goods and services for which you seek the registration. For each area you list, you must be able to demonstrate use in commerce, which means that you must be able to provide evidence either that you’re currently engaged in commerce in the areas listed or that you have good faith intent to use the mark in the areas listed on your registration application.

Using your mark in commerce means a couple of different things.

• For trademarked goods: The mark is placed on products, labels, packages, displays, or documents associated with the sale of goods that are sold or transported interstate.
• For trademarked services: The mark is used or displayed in marketing and selling services that are provided in more than one state.

Simply putting your mark on stationery products or using it in business presentations isn’t enough to prove that it has use in commerce. You have to actually use the mark commercially in each of the categories covered by your application, and you have to keep using it. After three years of nonuse in any category, your trademark can be deemed abandoned and cancelled as a result.

To protect your trademark, work with and follow the advice of an attorney who specializes in trademark law. Be prepared to periodically assess that, in fact, your trademark is used in commerce in each of the usage categories for which it’s registered. If you aren’t using the mark in all its designated categories, amend your registration. Otherwise, you put your entire registration at risk.

Defend it or lose it

By obtaining federal trademark registration, you claim exclusive rights to use a name, symbol, tagline, or other identifying brand element. With that right, however, comes an obligation to use the mark continuously and consistently and to bar any usage that weakens your exclusive claim to the mark.

Follow all the trademark-protection advice provided by your trademark attorney and the USPTO, including these guidelines:

• Don’t use your trademark name as a verb, and don’t allow it to be turned into an active word by adding -ing.

  Consider this cautionary true story. The trademark for Windsurfer applied to a wind-propelled, surfboard-like apparatus patented by Californians Jim Drake and Hoyle Schweitzer in 1968. But after the term was presented as a verb — by using the word windsurfing to describe the sport of sailboarding — courts found the mark to be generic and no longer protectable as a trademark.

• Do use your trademark as an adjective in front of the generic term for your offering, not as a noun that describes your offering. For example, Xerox copier and Macintosh computer are proper uses of trademarks.

  The story of the escalator illustrates what happens if you fail to follow this rule. The name Escalator was once a trademark of the Otis Elevator Company. However, instead of consistently using the mark as a descriptor (as in Escalator brand moving stairs), it was used as a noun (an escalator), and the trademark protection rolled right out of sight.

  For a positive example of trademark protection, the owners of the Rollerblade mark have spent millions of dollars to educate consumers and competitors about how the mark can and can’t be used. The gist of their message is that Rollerblade isn’t a generic term for in-line skates, and rollerblading isn’t a sport. Rather, Rollerblade is a trademark name of a company that manufactures in-line skates, and it’s the brand of equipment you wear when you go in-line skating. Using the term in any other way puts the trademark at risk, and the makers of Rollerblade in-line skates pay dearly to ensure that doesn’t happen.

• Do accompany your trademark with the appropriate symbol: superscript TM for unregistered trademarks, superscript SM for unregistered service marks, and ® for registered trademarks or service marks in at least one prominent location in each brand communication.
• Do present your trademark consistently, with no variation in spelling and no addition of dashes or slashes.
• Do separate your trademark name from surrounding text by underlining it or by presenting it in bold, capital letters, or italics.

If you slack off and use or allow others to use your trademark name as a verb or a generic label, you dilute your exclusive rights to the term and risk rights to your trademark as a result. See the sidebar “Genericide: A term only brand owners know and care about.”

Shielding Your Brand from Misuse

Regardless of the form of legal protection you put in place to protect your brand’s identity from misuse outside your company, you need to establish and adopt a set of well-crafted and carefully monitored usage guidelines and standards for use within your company.

Laying down the law with brand-usage guidelines

Chapter 8 includes advice for stipulating your logo usage guidelines. Beyond consistent logo usage, well-branded organizations establish style guidelines — rules may be a better word — for how their identities may be presented.

As you define how your brand can be presented, consider and cover all the points in this section.

Logo usage

To ensure that your logo always appears exactly to your specifications, begin by creating digital logo art files that can be scaled larger or smaller only as a single unit. By using these established files, designers and others can’t take artistic liberties with logo elements.

Additional ways to protect your logo include

• Requiring that your logo be reproduced only from approved materials provided digitally or in reproduction-ready form by your organization
• Providing your logo in horizontal and vertical versions and stipulating that any alternative presentation must be approved prior to usage
• Defining how your logo may be placed in printed materials, including the smallest size in which it can be reproduced and the amount of open space that must surround it in order to protect its presentation
• Explaining allowable color treatments, including whether the logo can be reversed (to appear as a white image in a field of color) and the exact ink colors in which it can appear

Logo usage is covered in more detail in Chapter 8.

Typestyle

A quick way to unify the look of your brand presentation is to limit the typestyles or fonts that you allow in your ads, brochures, signs, packaging, or other materials. For best results, adopt and limit type usage to one or several fonts for use in headlines and one or several fonts for use in body copy or text.

As you choose typestyles, match how your communications look in print with the personality and character of your brand (see Chapter 6 for help defining your brand character). For example, if your brand personality is crisp and professional, you won’t want to choose a typestyle that resembles cartoon captions or graffiti.

Copy guidelines

Write copy guidelines to define how your name can be presented and what words may and may not be used in association with your brand.

• Define which parts of your name or slogan must be presented in all capital letters or with an initial capital letter.
• Define when, if ever, your name may be abbreviated and, if so, what abbreviations are allowable.
• Prohibit using your brand name as a verb (with -ing) or as a noun. Think of your trademark name as an adjective that modifies a generic word that describes your product (for example, JELL-O gelatin).
• Prohibit using your brand name in plural or possessive form (in other words, don’t add an s or ’s unless your brand is trademarked in that form).
• Prohibit breaking and hyphenating your brand name at the end of a line.
• State whether and when your name must be accompanied by a designation such as Inc., Ltd., or LLC.
• Define which parts of your name or slogan must be accompanied by a trademark, service mark, or registered trademark symbol based on the advice of your trademark attorney.
• Define whether and how you want your marketing materials to carry a copyright notice (for example, © 2015 Your Brand Name, Inc.). For copyright information, go to www.copyright.gov.

Search online for “brand identity style guides” for examples of usage guidelines for established brands.

Social-media guidelines

Unless you’ve been without Wi-Fi the past few years you already know that social media is a breeding ground for brand disasters. A few errant words, a couple of misuses of the brand name, a comment out-of-tone for the brand voice, or a damaging post by a person identifiable as a brand representative can set the whole brand organization scrambling for image repair — which is the topic of Chapter 18.

If your brand doesn’t already have a set of social-media usage guidelines, start assembling one now. For hundreds of examples, visit the Social Media Policy Database assembled by Social Media Architect Chris Boudreaux (socialmediagovernance.com/policies). You’ll find links to the guidelines used by businesses, academics, nonprofits, and healthcare organizations, with examples covering everything from social media policy, blogging policy, Facebook comments policy, and more. A section of the site also leads to tips and templates.

At the very least, cover the following points in your guidelines:

• Provide those who will post on your behalf with a review of your brand statement and the brand image and promise all communications must uphold
• Clarify your policies regarding how staff members are allowed to post personal and professional updates.
• Regardless of how long your guidelines run, create an easy-to-understand overview that runs no more than a few pages long to be sure that everyone on your team reads at least the most important parts of your policy. Then hold personal training sessions to be sure the information is conveyed and received.

Enforcing brand-usage rules

Protecting your brand trademark takes a combination of preemptive, precautionary efforts followed by non-stop usage monitoring. You need to set and follow trademark protective actions — and you need to find and stop anyone who misuses or infringes on the brand you’re aiming to protect.

Take every one of these actions:

• Put the appropriate brand protections in place, from filing your name with local government offices to registering your trademark.
• Define, formalize, and circulate your brand usage guidelines.
• Name and empower a department or person to monitor and enforce your brand usage guidelines (see the next section).
• Train your entire employee team about proper use of your brand and trademarks.
• Require all suppliers, marketing partners, licensees, or others who present or help you project your brand image to respect your trademark and to follow your brand-usage guidelines.
• Don’t allow misuse or infringement of your brand and trademarks, either within or outside your organization. If you discover infractions, address them immediately.
• Monitor and manage your trademark registration to be sure you’re using your mark properly in all registration categories, and to amend or renew your application as necessary to keep it accurate and current.

Naming and empowering a brand cop

Your brand cop, also called a trademark coordinator, is the person (or department) that keeps your brand safe from misuse or infringements. Consider assigning the task to your marketing vice president or to a person in your marketing department. The brand cop’s job is to enforce brand usage guidelines internally while also continuously monitoring for misuse of your brand from those outside your organization.

Following are the specific tasks this person should perform:

• Train employees regarding use of your trademark and brand identity.

  Training should take place at the time of hiring and again whenever the brand is updated, extended, or in any way revised. Providing printed or online versions of usage guidelines isn’t enough; plan face-to-face meetings and in-person presentations to demonstrate and personally explain your brand presentation. Then provide printed or online versions of the guidelines for ongoing reference.

• Review brand materials for consistency with brand presentation.
• Review (with your attorney) plans for copromotions or license agreements to be sure that they uphold your trademark and brand presentation rules.
• Monitor use of your trademark by those within your organization, watching for any of the trademark violations noted in the section “Defend it or lose it” earlier in this chapter.
• Watch for misuse of your mark by other organizations that may try to use or misuse your mark or to adopt a mark that closely resembles yours and causes marketplace confusion as a result.

  Search online for unauthorized usage by entering your trademark name as well as violations of your name — such as your name as a verb — in search engines. Study the search results as well as the ads that appear alongside the results to see if your mark is being used erroneously.

• Take action against trademark abuses.
• Keep records of trademark usage and trademark enforcement.

  Should your trademark ever be questioned, you want to be able to prove that, in fact, your trademark was used in commerce in each category covered by the application and that it was aggressively protected and defended, both within and outside your organization.