Protecting your Trademark, Protecting your Brand

We’re pleased to announce Lynam & Associates has recently been published in the Plumbing, Systems & Design magazine as general counsel to the American Society of Plumbing Engineers.  Our first article for the magazine is applicable advice to all small businesses, regarding trademarks and the importance of establishing a brand:

From The General Counsel’s Desk:

Protecting your Trademark, Protecting your Brand

By: David J. Lynam and Carolyn E. Sorock, Esqs.

ASPE®, CPD®, Plumbing Systems & Design® are all familiar to ASPE members and supporters as being names directly identified with the Society. They are all also United States registered trademarks owned and carefully safeguarded by ASPE. They represent powerful rights and protections in an environment increasingly occupied by scammers, cyber-squatters, rip off artists, and sound-alike competitors.

As ASPE’s General Counsel, we protect and monitor ASPE’s trademarks, and we recognize that the competitive business landscape is in a state of great flux. As demand shrinks, marketing and branding may become a larger part of your business responsibilities. While basic marketing will get your name out to customers, branding will ensure that your name actually means something to customers. At ASPE’s Convention, we had the pleasure of meeting a number of ASPE’s members at the convention’s seminars, booths, and parties. We noticed that many of ASPE’s members are business owners, meaning that many of you are juggling the demands of a business—keeping accounts, making employees happy, and marketing the business—along with the usual demands of plumbing engineering.

A branding strategy goes beyond simply identifying your business with basic marketing strategies; a brand should evoke the strengths of your business in your customers’ minds and help them to remember your business the next time they have plumbing engineering needs. Think of the Ivory brand, which started as White Soap and was rebranded as Ivory Soap. “White” is merely descriptive, while “Ivory” is memorable with connotations of beauty and exotic origins. With some tweaks to your marketing model, you can build a brand name and brand loyalty, meaning that customers will keep going to you for their plumbing products and services needs, and they will be recommending your products and services to their friends.

The legal side of marketing and branding is trademark law, a unique area of the law in that complying with trademark law directly helps your business. We’ll be outlining some easy tips and tricks to protect your trademark. We’ll show you how protecting your trademark will help to build, solidify, and protect your business’s name.

You may already own a trademark or service mark. American trademark law allows you to acquire legal rights in a trademark simply by using it, whether the mark is a logo, a word, or phrase, or even distinctive packaging or colors. No registration is required to acquire very basic trademark rights. For example, if you run a business called “The Jolly Plumbing Engineer Company,” and have a website or run a yellow pages advertisement for “The Jolly Plumbing Engineer,” you’ve earned some trademark rights in that name. (But, do make sure you are properly registered in your home state if you’re doing business under a different name than your business name.)  Filing for a U.S. trademark for your name confers the full set of rights that are conferred by official trademark status, as discussed later.

Once you start using a mark—say, “The Jolly Plumbing Engineer”—here are our tips and tricks for using the trademark to both enhance your legal rights and to create a powerful brand:

Pick your trademark carefully

Trademark Strategy: Many considerations go into picking a brand name, so it may seem distracting to have to worry about whether a name will be protectable and registrable with the U.S. Trademark Office, too. However, by consulting an expert, such as a trademark lawyer, before picking a brand, you can avoid spending thousands on a designed logo, promotional materials, and a website address when your brand is being used by someone else or is not eligible for trademark protection.

Brand Strategy: Taking the time to consult an expert before picking out a trademark makes business sense. A brand is very useful, but it also is a major investment for your company. Having a distinctive and legally-protected brand name makes your business more valuable, as intellectual property like trademarks often form a large part of the price paid in business acquisitions and mergers because of the good faith value in the brand name that is protected by trademark law.

Use a brand name, not your business name

Trademark Strategy: You cannot simply trademark your business name, but many businesses have trademark rights in their names. If you’re trademarking your business name, it’s best to drop the “Inc.,” “Ltd.,” “Co.” or “LLC,” as you cannot use such designations if you decide to register your trademark. Then, you have to show that you have used your business name as a trademark. Using a name as a trademark means printing your business name in distinctively bolder, larger, and different lettering than the lettering you use for your address, phone number, and other business information. Use of contrasting color also distinguishes your business name as a trademark. If your business name is simply your surname (e.g., “Smith and Co.”), you may have to select a new trademark that is different than your business name, as surnames are generally not trademarkable.

Brand Strategy: Good branding calls for a brand name that is memorable and evocative of your selling points—for example, quality, value, reputability, and prestige. In many cases, the best brand name to sell your company’s products or services may not be the business name that you registered with the Secretary of State when you first started your business. Many business owners do not fully consider their brand (and do not consider its trademarkability) when choosing their business’s name—they’re thinking about raising capital and sticking to their business plans. To pick out a trademark, take some time to consider your brand, the qualities you want it to convey, and do a quick Google search to see how many other businesses are using the name already. Most importantly, check to see if the internet address using your brand name (e.g., www.jollyplumbingengineer.com) is available—if not, you should probably keep looking. Ask business associates, friends, and employees about the strengths of your business and for suggested brand names.

Make your brand memorable

Trademark Strategy: Not all trademarks are equally strong. Although you can get a weak trademark registered, you won’t have much protection against others who want to use the same trademark. It’s best to pick a strong trademark when deciding on a mark, and the strongest trademarks are those that are unique. The strongest marks are ones that are not words found in any language, such as Pepsi and Xerox. Other strong marks are those that use a known word in an unfamiliar way, such as “Apple” for computers. Marks that are merely descriptive of an aspect of your goods or services, such as “Quality” or “Speedy,” are weaker and much more difficult to register. However, if your mark is descriptive in a fanciful, more subtle way, such as “Coppertone” for a tanning lotion, it is a strong mark.

Brand Strategy: Smart trademarking and smart branding may seem to be running contrary when it comes to picking a brand name. At first, you may want to snatch up a brand name that conveys the qualities that make your products or services the best choice for a consumer, such as “Quality Plumbing,” “Value Plumbing,” or “Best Plumbing.” However, a smart brand strategy should lead you to pick memorable and unique brand names for your business, because hundreds of other companies have probably tried using the “Best” or “Quality” brands and have failed. Better branding insists on using a unique brand that will distinguish you from the other providers of plumbing engineering services or plumbing equipment.

Use your brand consistently

Trademark Strategy: Many businesses undermine their own trademark rights by using their trademarks/brand names inconsistently. Make sure you decide on a trademark and use it the same way every time you advertise for your business or mark the goods you are selling. Take a look at your business’s website—do you use your business name in some places and your trademark in some other places? It shouldn’t be “The Jolly Plumbing Engineer, Inc.” in some places, “The Jolly Plumbing Engineer” in others, and “Mr. Jolly Plumbing Engineer” in another place. Finally, using your internet address/url/domain name (e.g. www.jollyplumbingengineer.com) does not count as using your trademark unless your trademark actually includes the “www” and “.com.”

Brand Strategy: Picking a single brand name and using it consistently doesn’t only strengthen your legal rights in the brand, it will also strengthen your brand name. This is the most basic step in brand management—picking a brand and sticking to it. Using a single brand name in the same way each time you use it, whether on your website, on your trucks, or on your flyers, will solidify your brand in the eyes of consumers. In fact, if you don’t use your brand name consistently, you won’t really have a brand at all.

Get everyone on board

Trademark Strategy: To protect trademarks at companies with many employees and outside contractors, everyone needs to know about your trademark goals—not just your top officers and marketing department. Communicate with your web designers, graphic designers, and anyone who has a hand in designing your promotional materials. Communicate with your sales and customer service team and make sure they know how to use your brand name, know to always refer to your company by that name, and know what the brand name represents. Everyone needs to know to put your business name in large letters if you’re using it as a trademark. Make sure all employees use the same lettering and spelling and leave out extraneous words every time they use the brand name.

Brand Strategy: Streamlining your approach to your brand name by informing your sales team and outside marketing contractors about your plan for trademark protection will also help to strengthen your brand. If customer service and sales know your brand message, they will build your brand while protecting your trademarks at the same time. Make sure everyone is responsible for building the brand.

Keep records

Trademark Strategy: Many, many trademark disputes revolve around one issue: Who was the first business to use a certain trademark? In the United States, that is a big question, one that affects who owns a trademark when a conflict arises. Thus, it is very important to keep records of how you use trademarks, where you use the trademarks, and when you started using trademarks. If you want to deny the registration of a competitor’s trademark that is too similar to your trademark, you may have to prove that you started using your trademark first. And, you may have to prove that you started using the trademark in a certain geographic region, such as the New York metropolitan area, if that’s where your competitor is located. Start a trademark file, gather the oldest advertising and promotional materials you can find using the trademark, and save them indefinitely.

Brand Strategy: Brand names present significant investments, when you consider the money that goes into designing logos, websites, brochures, fliers, and letterhead. All of that investment can turn into money if you sell your business or use the trademark as collateralization for a loan. Also, your brand can constantly bring money into your business as customers come to recognize your brand as a source of high-quality services or goods. Because brand names are worth a lot of money, keeping records of your use of branding will help you to see how your brand value rises and falls over time and allows you to track the effectiveness of your marketing and sales efforts.

Register your trademark

Trademark Strategy: Registration of your trademark with the U.S. Trademark Office is not an absolute guarantee of the superiority of your rights in the mark, but will do a lot to protect your trademark: (1) registration makes it easier to assert, prove, and enforce your trademark rights; (2) registration allows you to sue any infringer in federal court; and (3) registration makes your trademark easier to register and enforce abroad; for example, U.S. Customs will stop any goods that infringe on your trademark rights at the border. Even better, after five years of federal registration, your trademark rights become virtually incontestable.

Brand Strategy: Protecting your trademark always complements your efforts to establish and protect your brand name, and federal registration offers significant protections for your brand. Registering your trademark will place it on a nationwide database of registered trademarks, which other business owners will search before applying for their own trademarks. Another benefit of federal registration of your trademark is the right to use the ® signifier, which you can only use after you register your trademark with the U.S. Trademark Office. (Otherwise, you can use only the ™ signifier.)

Following these tips will build your brands and protect your trademarks, which will help your business to take on the challenges of the increasingly-crowded marketplace where online presence, branding, and well-protected trademarks are crucial.

DISCLAIMER: The application and impact of laws can vary widely based on the specific facts involved. Nothing in this column should be considered legal advice or an offer to perform services. Do not act upon any information provided in this column, including choosing an attorney, without independent investigation or legal representation. This column is not a substitute for consultation with an attorney.