Thursday, October 16, 2014

Building Brands and Making Marks Part I: The Brand Selection Process

Whenever a client contacts me at the office or after a seminar and they are in the early critical stages of the brand selection process, it is as clear as any other time in the brand development process that the nuances and misconceptions many have with respect to the tenets of U.S. Trademark Law can pollute and prolong this process unnecessarily. 

If unassisted or ill-informed, a brand owner with a less than competent handle on trademark law can make decisions that later with have serious implications with respect to the registerability or enforceability of a trademark that while registered is still an extremely weak mark.

The first misconception I find that is helpful to clear up before proceeding with the "brandstorming" process is to highlight the differences as well as similarities seen between a strong brand and a strong trademark.

While each brand will present new and interesting consideration, in general, a strong brand does not necessarily result in a strong trademark and in fact, it is the very characteristics that make a brand strong that can actually work to invalidate or substantially weaken a trademark.  It is this apparent dichotomy that should always be on the forefront of a brand owners mind throughout each step of the brand selection process. 

To illustrate this point by way of extreme example, it is necessary to demonstrate the potential issues that can arise when a brand owner only focuses on one component when selecting a brand name, and in doing so, they fail to make a decision based on the recommended balancing of factors.

On one hand, a brand owner must take into consideration the factors relevant to selecting a strong brand.  On the other hand, and with varying degrees of overlap, they must also take into consideration those factors relevant to selecting an available trademark capable of registration and enforcement.

While every new brand will present new challenges, it is always important for brand owners to take notice of the respective interests at play and to highlight the ways in which the potential brand is complimentary to the development of a strong and enforceable trademark registrations and those ways that the brand being considered might be problematic when attempting to complete the trademark registration process.

So, how does a brand owner reconcile these sometimes conflicting motives and goals.  Should they sacrifice the enforceability and the registerability of a trademark in favor of a brand that is well known and strongly associated with those goods and services for which the brand is intended to be known?

Should a brand owner take into consideration the importance of future brand protection and valuation efforts during the selection process and perhaps add distinctive or distinguishing elements to an already known brand in hopes of artificially prescribing much needed distinctive elements to a trademark otherwise at risk of becoming diluted by virtue of some generic and/or descriptive characteristic in the brand name.

Sometimes, the very wording that makes a brand click in the minds of consumers is the same wording that leaves a trademark vulnerable to a finding that it is either weak or altogether incapable of being registered as a trademark.

The frustrating answer is often times "IT DEPENDS", and every selection process will be filled with unique considerations associated with the industry in questions and the kinds of words being used to connote a brand name with the goods and/or services for which the brand is ideally to be affiliated with in the minds of consumers.

Effective brand and trademark selection efforts should be taken seriously and it is at this point in the brand development process that a brand owner should find themselves a competent and effective trademark attorney.

Because a comprehensive trademark conflict search is the final check and balance for any advisable brand selection effort and because such searches can only be interpreted and analyzed in the manner necessary to determine conflicts or other registerability issues, a brand owner is almost invariably going to find a qualified trademark attorney is necessary to complete this final step in the brand selection process.

For Part I of our Anatomy of a Brand and Trademark Series we look to highlight the nuanced complexities that can sometimes unknowingly be at play in the brand selection process to highlight the first crucial stage that a brand owner will find a true use for IP counsel.

While a brand owner might not retain counsel until they actually commission a trademark search, the aforementioned dynamics and considerations discussed above will help ensure that a brand owner is at the very least mindful that there are various competing interests at play throughout this process and if a brand is too good to be true, there is usually a reason.

Sometimes a brand is so well known with respect to its association with a specific goods and/or service that its strength actually becomes a liability as the brand has crossed into the treacherous terrain of generalized trademarks, the place where a brand can be so strong that it can actually become worthless to a brand owner as they can no longer control the use and popular association of the brand name by consumers to describe the good or service itself. 

When this often unforeseen development occurs, a brand that was thoughtfully selected can quickly become in effect a brand that no longer functions to indicate the origin of a good or service and instead only helps to identify goods and/or services typical to the commercial settings in question.

As we want our clients and all brand owners to take all relevant and necessary points into consideration, we will be releasing a series covering commonly misunderstood or overlooked areas in the brand selection and trademark application process.

Now that we have covered the competing and at times conflicting nature of a brand and trademark, we will proceed next week to move onto the topic of trademark registerability and some of the important nuances of the actual application process that should be noted by all brand owners.

We aim for this series to appeal not to attorneys, IP attorneys should already be familiar with all of these issues and points and if they are not, they should be assisting clients in another area of law, but rather to appeal to actual brand owners most likely just beginning the process of finding a competent TM attorney or in other cases they have decided to brave this often difficult process themselves.

In any event, we hope for this series to be a helpful guide and way for brand owners not trained in the complexities of intellectual property law to gain enough insight into the law and the procedure to be aware of common pitfalls and the thought processes of the very best attorneys working in this field.