Chapter 17
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.
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
Use the next sections as you proceed on both fronts.
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.
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:
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.
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.
Fictitious names or assumed names require registration following these steps:
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.
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.
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:
To obtain a federal trademark, plan to take these steps:
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.)
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.)
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).
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.
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:
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.
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.
Using your mark in commerce means a couple of different things.
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:
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.
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.
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.
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.
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
Logo usage is covered in more detail in Chapter 8.
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.
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.
Search online for “brand identity style guides” for examples of usage guidelines for established brands.
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.
At the very least, cover the following points in your guidelines:
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:
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:
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.
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.
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.