Howard A. Caplan Lewis, Longman & Walker, P.A.
Most company owners are aware that their company has one or more brands. Many, though, do not have a good understanding of what a brand really is nor how to best protect a brand. A brand can be as simple as a name, or as complex as a combination of word, graphical images, and sounds. This article will discuss what branding is, what laws apply to branding, and the benefits of proper protection. This article is an overview that will provide basic knowledge about brands and how brands can be protected. Like many aspects of business, the details are where many of the decision making processes lie. These details will include each company’s branding and branding strategies, business methods and models, and legal details inherent in protecting branding.
What is a Brand?
A brand is a distinctive name or symbol that identifies a company, a product [or service] line, or a product [or service]. Business writer Seth Godin, in 2009, defined “brand” as “the set of expectations, memories, stories and relationships that, taken together, account for a consumer’s decision to choose one product or service over another.” What Seth describes is at its essence why branding is important. Done right, branding is what sets one company, product, or service apart from another: The competition.
Stated differently, a brand can be anything that identifies the source of the product or service. Branding starts with you and your company. The how and what you use to identify the product or service you provide to the public. Before your customers can have “expectations, memories, stories [or] relationships” you have to develop the brand and place it in the marketplace to be bought or used.
The public presentation of your brand can be any word, design, colour, sound, scent, other device, or combinations of them that serves as an identifier of the source of an item or service. When properly used the foregoing become a trademark, or in the case of services, a service mark. I will use trademark, or mark, to include service mark, as the applicable laws are essentially the same. Your company’s name, how it does business with the public and any of its sales and marketing brands become a trademark upon use in the course of business. Consider General Mills, which is both the company name, and a provider of brands of cereals, flours, soups, yogurts, and more. The General Mills trademark is the words “General Mills” as well as the stylised “G”. Some of General Mills’ trademark brands are “Wheaties”, “Pillsbury”, and “Progresso” soups. Owens-Corning’s pink insulation is a colour trademark. The musical tones at the end of many computer commercials is Intel’s sound trademark. All of these are recognizable, and recognized, and identify their respective brands apart from their competitors.
Trademarks are unique among the main areas of intellectual property because mere use of a trademark confers what are known as common law rights to the user. Under common law an owner can prevent others from using confusingly similar marks on similar items or services in the same geographic areas in which the owner uses the mark. There existed so much confusion about the protection afforded a company name by filing articles of incorporation that in 2003 the Florida Legislature revised the business corporations law to clarify that name registration by formation did not confer registered trademark rights in the corporation’s name. And registration of a fictitious name is not trademark registration. Thus, absent actual trademark registration of the corporation’s name, only common law trademark rights apply. Common law rights, though, are poor cousins to the rights provided by registering a trademark with the appropriate governmental
Registration – Statutory Protection
Perhaps the greatest right of registration is the right to prevent others from the using the same or a confusingly similar mark for the same or similar goods or services. The right of prevention is dependent upon where the mark is registered: The United States and all of its territories if registered with the U.S. Patent and Trademark Office, or an entire state if registered with a state trademark office. Registration also provides for stronger and easier enforcement against infringement, for enhanced money damages for infringement, injunctive relief, impoundment, and recovery of attorney’s fees in certain cases.
Trademarks are also unique because registration can be perpetual for as long as use continues. Registration is effected by filing an application for registration with the Florida Department of State or the U.S. Patent and Trademark Office. In order to be eligible to apply for a U.S. registration the applicant must be using or have a real intent to use the brand [trademark] in interstate commerce, meaning across state lines. Florida law requires the applicant to be using the brand in the State of Florida.
Trademark law, whether common law or statutory, has numerous elements that apply in each situation. One of the most important elements is priority. In most cases the first party to use a mark in business has the right to require later users to cease infringing uses of that mark. Additionally, a senior user may have superior rights to register the mark. Perhaps the second most important aspect of trademark law is the strength of a mark and how that strength affects branding.
Trademarks range in strength from fanciful being strongest [Google or Kodak] to merely descriptive [National Chamber, for the U.S. Chamber of Commerce]. In between the foregoing are the stronger arbitrary marks [words not related to the item or service], less strong suggestive marks [some relationship between the mark and the item or service, sort of an “aha” recognition], and weakest descriptive marks [describing a characteristic or quality of the item of service]. On rare occasions, a brand can become generic and lose all trademark protection. Aspirin used to be a registered trademark of the Bayer Company. This is why Xerox says you make a copy, not a xerox.
For a brand to be successful it must be distinctive. It does not, though, need to be unique. There are many instances when the same or similar brand name can be used by different companies for different types of goods or services. For example there are U.S. trademark registrations for “Rally” by different companies, for car care products, pet supplies, car seats, and more. If the goods or services are sufficiently different from another user of a mark then the mark can serve as a brand because of the distinctions between the different goods or services.
Your company has at least one brand, its public trade name. How strong that brand – and any other brands your company develops – is dependent upon the brand’s uniqueness, distinctiveness, and use. Good marketing becomes ever more important to business success. Setting your company apart from your competitors is easier when your brand is distinctive and recognisable. Protection and enforcement of your brand, or brands, should be critical aspects of your business’ marketing strategies on the road to success.
About the author
Mr. Caplan is a transactional attorney whose practice focuses on intellectual property, business and technology law, commercial and corporate law, franchising, and real estate. He is a member of The International Trademark Association and American Bar Association Forum on Franchising. He is also a member of The Florida Bar and the Jacksonville Bar Association, where he is chair of the Franchise, Intellectual Property and Technology Law Committee. He can be reached at firstname.lastname@example.org or at (904) 353-6410.