Protecting Your Brand

Why is Brand Protection Important?

Key aspects of brand protection include:

• Obtaining appropriate legal protection.
• Using the brand properly.
• Enforcing the brand.

Failure to take appropriate steps in any of these areas could jeopardize brand rights and value. If rights are weakened or lost, you may not be able to prevent the brand from being used by competitors.

What is a Brand?

Brands are distinctive identifiers and associated elements that distinguish your products and services from your competitors’ products and services. They add value to your business by enhancing consumer awareness and improving customer loyalty.

A brand name or logo is primarily protected under trademark law. A trademark can be:

• A word (PEPSI).
• A logo (NIKE “swoosh”).
• A color (UPS brown).
• A shape (COCA-COLA bottle).
• A slogan (WHAT WOULD YOU DO FOR A KLONDIKE BAR? for KLONDIKE ice cream).
• A domain name (AMAZON.COM).
• A person’s name (RALPH LAUREN).

A strong brand can be a valuable commercial asset. According to a recent survey the top three global brands by value are:

• APPLE
• GOOGLE
• AMAZON

Creating and Legally Protecting a Brand

Brand elements may be protected by certain types of intellectual property rights, for example, trademark and copyright, which can be used to strengthen the brand and prevent unauthorized third-party use.

Brand Creation

• Speak to an experienced business lawyer early on in the creative process to ensure that what you create can be protected and does not infringe other brands or other intellectual property rights.
• Keep any development confidential. Failure to do so can prejudice your ability to get legal protection. Clearly mark all confidential information as such, including when distributing internally.
• Take great care if you involve third parties such as brand consultants or advertising agencies in creating a brand. Make sure that before they are engaged they sign appropriate confidentiality agreements and intellectual property assignment and work-for-hire agreements to transfer rights (such as copyright) in their work product to you.
• Ask your business lawyer to conduct appropriate trademark clearance to ensure that any trademark elements of the brand do not infringe the rights of others.
• Keep accurate records of the development process and date stamp these documents. This will help provide evidence if any infringement claim is brought against you. For example, for a copyright claim, evidence that it was created as part of an original process rather than copied.

Legal Protection

It is important to recognize and understand the legal rights that can be used to protect brand value:

• In many countries trademark rights are granted to the party that is the first to register the trademark. In some countries, including the United States, trademark rights arise from use of the trademark and can be strengthened by registration. Trademark protection can extend to brand elements such as distinctive logos, slogans, and colors. Trademark rights prevent others from using the same or similar mark in a manner that is likely to cause consumer confusion.
• Copyright protects original literary, artistic, and scientific works, for example, a written work such as advertising copy. It protects original works from other people copying the works without permission.
• Trade dress. Trade dress is the overall visual appearance of a product or its packaging. Subject to certain requirements, and depending on the jurisdiction, trade dress may be protected under trademark, copyright, or design laws.
• Inventions associated with a brand may be protected under patent law.
• Trade secrets and confidential information. Formulas, drawings, patterns, compilations, programs, devices, methods, techniques, or processes associated with a brand that are not generally known and are kept in secrecy may be protected under trade secret or confidentiality laws depending on the jurisdiction.

Registration: Why and Where?

Some brand elements can get greater protection if they are registered (for example, as a registered trademark or copyright). In many countries, trademark rights are granted to the first party to register the trademark. In other countries, registration is not required for protection but affords various benefits. For example, in the US, a federal registration serves as evidence of the owner’s exclusive right to use the trademark nationwide for the goods or services listed in the registration.

Applications to register trademarks are subject to various requirements, including that the mark be distinctive.

Trademark registration may be costly and time-consuming. Trademark rights are territorial and rights in one country generally do not confer rights in other countries. For example, it is possible that a trademark may be protectable in one country but not available in other countries because it is already owned by another company. The issues are complex so you should speak to an experienced business lawyer.

Using a Brand

Once a brand has been created and protected, it is important that you use it consistently and do nothing that could cause you to lose protection. Steps that can be taken to ensure that your brands are used properly include:

• Adopting and enforcing brand use guidelines. Brand use guidelines should include clear rules on how the brand must be used throughout the business. For example, with appropriate trademark symbols, as an adjective, or in certain fonts or colors. Enforcing brand use guidelines helps build up the recognition of the brand, its market presence, and therefore its value.
• Using the brand consistently. Even minor changes in the way your brand is used, for example, in font or color, can create a new right that will then need to be protected in addition to the rights you already have. Costs of protection, for example, registration fees, can quickly rise if you have multiple variations of your brand. Also, use of new variations may dilute the brand or jeopardize rights in prior versions.
• Using proper notices. Use copyright notices (©) and trademark symbols (for example, in the US, ™ for an unregistered trademark and ® for a federally-registered trademark) where appropriate. They act as an early warning system to would-be infringers and will help us when seeking to prove that a defendant knew about your rights.
• Ensuring that trademarks are used. Nonuse of a mark can result in loss of protection.
• Ensuring timely compliance with renewal requirements for registered rights. Failure to meet renewal requirements may result in the loss of registration protection.

Licensing a Brand

A brand can be commercially exploited and strengthened in a number of ways. A principal method, other than your own use of the brand, is through licensing. A license is generally an agreement that gives another business the right to use your brand for specified goods or services during a defined period in a defined territory.

Always consult with an experienced business attorney before allowing any third party to use your brand either formally or informally. Generally you should only permit a third party to use your brand only under a written agreement that sets out specific parameters and requirements for the use.

Enforcing a Brand

You can lose brand protection if you allow people to use your brand without your permission and control. Infringement or other misuse of your brand by others will also weaken its value. You must therefore monitor the marketplace and take appropriate action against others who infringe or misuse your brands. To help protect your brands you should:

• Keep accurate records of permitted third-party use of your brand rights. Monitor use to ensure adherence to the terms of any agreement.
• Make sure you and your staff understand the importance of reporting any suspected infringement or misuse of your brands.

If you have any questions relating to this note, please don’t hesitate to CONTACT US. In many cases, we may need to take prompt action to protect your interests and prevent damage to the brand.