Understanding the Legal Side of Branding, Part 1

A new year brings new beginnings. It may sound like a cliché, but many people view this time of year as a reason to hit the reset button or launch new initiatives. From a business perspective, that could mean rebranding your current business, enhancing and elevating your current business brand, branding a new product or service, or starting and branding a new business. While most business owners tend to focus on the marketing aspects of branding, many neglect or are unaware of the legal aspects. This lack of attention or knowledge can negatively impact the value of your business and the products or services you offer, while opening the door for competitors and other opportunists to use and profit from your hard work. Here are some basic legal issues you need to consider before you move forward with any branding initiative. Trademarks – whether or not they are legally registered – are the core components of your brand. A trademark identifies your business, product or service and distinguishes you from competitors. It may seem obvious, but it is important to choose the name of your business, product or service carefully. Before you get too attached to a name or invest time and money into it, consider having an attorney conduct a preliminary clearance search. This will ensure that you don’t infringe upon another company’s mark, which could result in a lawsuit or force you to go through a costly rebranding process. You also need to make sure that the name you choose is entitled to trademark protection. For example, you can’t trademark a generic term such as “widget” or “software,” and unless you’re famous you probably can’t trademark your name. It’s also difficult to trademark phrases that are descriptive or identify a place of origin, such as “Tampa IT Security Consultants.” An attorney can help you determine if you could run into trademark issues. Words, designs, slogans, symbols, logos, distinctive colors and shapes, or any combination of these can be trademarked. After you’ve determined that your desired mark is not already trademarked and is entitled to trademark protection, you can file a trademark application. Although you don’t have to use a trademark before filing for an application, you do have demonstrate “use in commerce” to the trademark office. That means you’re using the mark for business purposes in a way that can be regulated, not just to reserve or claim rights on the mark. Use of the mark on packaging or in marketing, offline or online, for the purpose of making a sale qualifies as “use in commerce.” Keep in mind that rights to a trademark are required through the use of the trademark, not the registration of the trademark. For example, if you plan to spend months or even years developing a strategic plan before you actually use your mark, you can submit an Intent-to-Use Trademark application, which reserves the mark from the filing date. Although neither federal nor state registration are required, there are benefits to both. In the next post, we’ll discuss these benefits, the importance of obtaining domain names, and things you can do on an ongoing basis to protect your brand.

Daniel D. Whitehouse, Esq.

January 8, 2016

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