This insightful interview with Rhett Barney, Partner at Lee & Hayes, PLLC, is certainly not one to miss. Rhett touches on where companies often go wrong when trying to trademark, and aspects they often forget when trademarking internationally. Having an eye for fine details is a must, as Rhett below discusses how colours and signs can easily impact a company’s trademark and brand.
Can you suggest three things to consider when devising a unique ‘brand’?
Developing a unique brand starts with fundamentally understanding what a brand is and what it is not. Even though the term “brand” is often used by business and marketing people as a synonym for “trademark”, a brand is not just a trademark. A brand is also not the name of a business, a product or product concept, a copyrighted work created by a company, or an organisation’s advertising. Instead, a brand is a combination of an organisation’s products and services, unique source identifying words and symbols (trademarks), and advertising messages to the public. The interaction of each of those components creates a commercial impression that tells the public what they can and should expect from the company, at which point in time a “brand” is created.
With that in mind, my first recommendation is that businesses take the time to understand what their brand really is, and to make sure that each aspect of their brand is consistent with the overall brand approach.
My second recommendation is that businesses look at each aspect of their brand, instead of as the brand as a whole, as it is made up of protectable and protected elements. This might mean looking to get a registration to protect a trademark, ensuring that content that is created is original and does not “borrow” from others’ works, or revising a claim made in an advertisement to ensure that it is not false or misleading.
My third recommendation is that businesses seek to protect, within the limits of their budgets, the individual components of their brands. For example, most trademarks in today’s marketplace should have a federal registration. If you have a mark that you cannot get a registration for, either because the mark is not sufficiently distinctive, or because there are other conflicting marks that prevent it, that company should really think hard about why it is using that trademark. Similarly, if there is artwork or other copyrightable content (such as a video) that sets that company apart, the company should maximise its protection for that content by - at least as companies in the United States go - getting a copyright registration.
It is also very important for businesses to remember that not all trademarks are created equal. There is a spectrum of trademark strength, ranging from generic (non-protectable) to fanciful (most protectable). People deciding on trademarks should know about this, and they should be thoughtful about the trademarks that they chose.
In what ways can clients ensure that their trademarks are properly used for the benefit of developing their brand?
There are a lot of different things that companies can and should do with their trademarks to ensure proper use, which results in a stronger brand. The easy ones including using the trademarks properly; generally used as an adjective, set the mark apart in some way from the rest of the texts and imagery, generally avoid possessives and plurals, and correctly mark the trademark with a “TM” or “Circle R”, as appropriate. Consistency is also incredibly important, and this comes with having a strategy and a culture that informs people throughout organisations of proper and correct use of a company’s trademarks and other intellectual property assets.
What do businesses often forget in relation to protecting their design and brand, when trying to internationally expand?
Companies will oftentimes forget to re-examine their trademarks, business name, and product identifiers when going into a new country. Companies need to be sensitive and proactive about these issues when they roll into a new country. Sometimes the strategy can be to keep everything consistent across jurisdictions, but at least consider the following three items:
Meaning and translation
The company should talk with a local about how a word or phrase will translate, or if the word has alternative meanings, even if the languages of the two countries are the same. Further, if entering into a market that does not use Latin characters, such as China, businesses need to decide if they should select Hanzi (or Han) logograms to represent a word, or if they want to maintain the Latin format, which also affects filing strategy.
Imagery
Similar to words, certain images do not resonate well across cultures, so companies should look at them and decide if their current logos and other brand images are worth protecting in certain jurisdictions. If not, then the protective filing strategy should be altered accordingly.
Colour
Often overlooked in the branding context is colour. Colours have different meanings in different cultures. This is relevant for design trademarks, or logos, and filing strategy because companies need to decide if they want to file in colour or not, and what kind of protection they will receive by choosing to file in colour or black and white.
Another important aspect of brand growth that applies both domestically and internationally is to own as much relevant digital real estate as possible. This means owning all relevant domain names, Twitter accounts, Facebook profiled, LinkedIn profiles, etc. etc. This is particularly true in foreign countries where an English-only online presence will deter, rather than attract, consumers.
Can you share the general principles behind devising a strong global portfolio for branding decisions?
This is as much a business decision as it is a legal one. My advice to clients on expanding their portfolios abroad is to first consider what global marketplaces are strategically important to them. But before they can make that determination for most jurisdictions, they need to understand what kind of company they are in terms of the global marketplace. For example, consider if they are: international (importers and exporters with no real business investment outside the country); multination (some investment in other countries, but the products from the home country are typically adapted for the local market); global (invested and present in many countries with the same coordinated image across countries), or transnational (complex organisations that are much more decentralised with power given to each foreign market). Once they understand how they fit into the global marketplace, that should drive their foreign portfolio development, which will in turn support branding decisions. The “strategically important”, as I use it, means that there is either a financial tie to the country that justifies the investment, or there is a defensive reason for filing in that country, such as filing in countries where a business has no operations or market, but that may produce counterfeit goods or create a ‘copycat’ business.
From a purely legal perspective, there are a few basic guidelines that every company should take into consideration. The first and most obvious consideration is whether there is already someone in a target jurisdiction with a conflicting mark. If so, who has priority, or first use in that country? If the country has a first-to-file system, as many countries around the world do, is there any ability to claim priority to a home country application to pre-date the filing of the other country?
Is there anything else you would like to add?
The co-founder of HP, David Packard, once said that “marketing is too important to be left to the marketing department”. I agree with this wholeheartedly. Not because I don’t trust the marketing department, but because I am a proponent of getting marketing, legal, and C-suite together to make important branding decisions. While legal and marketing oftentimes butt-heads, it is my experience that they are both trying to accomplish similar objectives; they just aren’t good at communicating with each other. The more regularly these three groups get together, the better they will communicate, and the more protectable and valuable the resulting branding will be.
Rhett Barney | Lee & Hayes
Partner
rhettb@leehayes.com
P 509.944.4642 | F 509.323.8979
www.leehayes.com
Rhett Barney is a Partner at Lee & Hayes, PLLC and leads the firm’s Trademark and Copyright Practice Group. He provides worldwide trademark and copyright protection and enforcement strategies with a particular interest in branding and brand protection. Rhett represents clients ranging from small start-ups to leading global organisations. He is a featured speaker at universities, industry events and has been a featured legal analyst for MSNBC.
Lee & Hayes, PLLC is a dynamic law firm providing industry leading intellectual property counsel, as well as complementary legal services in corporate/securities and litigation. With intellectual property at its core, the firm focuses on providing strategic services to assist clients in the development, understanding, and protection of intellectual property assets.
The firm has offices in Atlanta, Georgia; Austin, Texas; Portland, Oregon-metro; Rochester, New York; Seattle and Spokane, Washington; and Washington D.C.-metro
