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Steve O'Donnell, Ph.D. Registered Patent Attorney

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A brand for a company is like a reputation for a person. You earn reputation by trying to do hard things well.
Jeff Bezos
A brand should be more than just the name of your business or the name of your product, it should be a totem for your business: a mark that is an emblem of everything the business represents.

Consider a can of Coke. Close your eyes for a second and picture the can. What did you see? I'd bet the one characteristic that really stood out was the cursive font spelling Coca-Cola, but you also pictured the distinctive red of the can and maybe even imagined the curved stripe running under the name. Now, what else is coming to mind, and more importantly, what are you feeling? I think of their Santa Claus and polar bear ads. I think about "New Coke" and my classmate whose dad filled a closet with the original formula before it sold out. I think about my mom buying a Coke and a comic book for me at the drugstore. I've associated all those memories and more with the brand. When I see a can of Coke, I'm confident I'll enjoy the contents, not only because I've had it before, but also because of all the pleasant memories attached to it.

A form of branding is also behind the entire concept of comfort foods. Chicken soup doesn't really help with a cold, but it's positively associated with past experiences of someone making soup for us when we're sick. Macaroni and cheese soothes me when I'm anxious, probably because it reminds me of being a kid with no real worries. I really don't like pickled herring, but I sometimes crave it, possibly because it was one of my mother's favorite foods and eating it reminds me of her (at least until I realize I'm eating pickled fish and have to stop).

A strong brand has to be unique so it stands out from other products in the market This uniqueness lets experiences with the product associate with the brand. A weaker brand doesn't form as close an association with experiences. Think about chips (I guess I should have eaten before I started writing this). Lets say your grocery store carries a store brand of nacho cheese tortilla chips and Doritos. You've been sent to buy tortilla chips, and both are the same price...which will you buy? You'll almost certainly buy the Doritos, because you've been exposed to their commercials for years and have an association between the ads and the brand. You've also had Doritos before and liked them, so the chances are that this bag will also be good. If instead, Doritos were just called something descriptive, like Nacho Chips, the association between your memories and the brand would be weaker because nacho chips describe the product itself instead of the brand so the chance of you buying the store brand are higher. Even more important though, is how much more is someone willing to pay for a brand name? That is really the strength or value of a brand: how much are people willing to pay for your brand named product than they’re willing to pay for an unbranded or competitor’s product?

You want your brand to be unique so people can't confuse it with another product of the same type. If it's not, there really isn't any point in branding. Trademarks are when you have a brand that you want to protect across the country, and perhaps internationally. I want to make sure my clients have the best brand they can, and I advise them on how to do that. Once a mark is chosen for the brand, I work to obtain the strongest legal protection available for it and prevent others from trying to steal the brand's identity.

Below I've compiled some of my most common questions about trademarks. Contact me for more specific answers.

  • What is a trademark?
    A trademark is some thing that identifies a source of goods or services.

    I'm a person, but I'm called Steve. My name represents me. I have shoes that are called Nike. My name uniquely identifies me out of a group of other people. The name Nike identifies certain shoes out all all shoes in a store. Nike also has other marks to identify their shoes such as the swoosh, a silhouette of a man leaping to dunk a basketball, and “Just Do It.” When you see shoes with any of those marks, you're assured they have the quality you expect from the brand.
  • What does a trademark protect?
    A trademark will let you stop competitors from using your mark. In some cases like piracy, you may be able to get damages including attorney fees.
  • What is the difference between ™ and ®?
    There are two types of trademarks, unregistered or common law trademarks, and federally registered trademarks.

    As soon as you start using something as a trademark, you can put ™ beside the mark. This alerts others that you consider that name, slogan, etc, to be your trademark. If someone uses your mark, even though you've done nothing more than use it, you may be able to sue them and get an injunction. Your rights with an unregistered mark are limited and should be carefully considered before you try to enforce it against someone.

    The second type, the ® means it's registered. It's been though an examination process and a registration certificate was issued. These give more rights to the owner such as public notice of the mark, the presumption of ownership, nation-wide enforcement options, the ability to get into federal court, the ability to prevent infringing good from being imported, and the ability to use the registration to obtain registration in other countries.
  • What does it cost to get a trademark registered?
    That depends on if there are any problems with the registration. If it goes through without problems, total cost is usually under $1000. If there are problems and the examiner refuses registration there may be additional fees if you decide to challenge the refusal.
  • Do I need a registered trademark?
    First, to get one you have to use in the mark in federal commerce, meaning that it's used across state lines.

    You're never going to need a registered trademark, but you'll wish you had one if you discover someone else is copying your mark and leaching the goodwill you've developed.

    Registration will also put you somewhat at ease since the mark has been analyzed by an attorney with the trademark office and cleared (meaning the likelihood of being sued over your mark is fairly low.
  • What common problems come up during the registration process?
    The most common problem I see is people choosing weak marks. There is a continuum of trademarks: the best are fanciful, they have no meaning by themselves. Xerox is usually used as an example of those because there is no xerox other than the product. On the other end are generic and descriptive marks. Those just describe the goods/services offered. Pizza would be a generic mark; Deep Dish Pizza would be descriptive.

    Weak marks are difficult or impossible to get through the examination procedure, and for good reason. Would you really want someone to be able to own the exclusive rights to use Pizza?.

    The next common problem stems from people trying to play-off of another mark. For example, there was a person who tried to trademark Eat More Kale to promote kale while giving a nod to the Chick-Fil-A slogan. Even though there might not be any competition between the two, the marks were close enough to allow Chick-Fil-A to protest the mark, and such a challenge can become very expensive to fight.
  • But I saw a story about someone that trademarked a stupid phrase that's been in use for years.
    Usually those stories miss the mark and report pending applications as issued registrations. Other times the press assumes that trademark rights are a lot broader than they really are. And sometimes questionable trademarks are registered. Email me if you have a specific one in mind.
  • Help! Someone is using my mark!
    You'll want to contact me if this is the case. There is some research we'll want to do before we do anything else. For example, I'll need to examine what products are in play, how long the other person has been using the mark, and whether I think there is any real likelihood of confusion between the marks. Then, I usually look at the potential risk to your brand versus the cost of different courses of action, and let that guide how we proceed.

    I'm not going to suggest filing a lawsuit against a small business located in a different part of the country that isn't interfering with your business, at least not as a first step. Often, smaller matters can be resolved with a letter.
  • Help! I want to use something close to someone else's mark!
    That's generally not a great idea. For one thing, the owner of the other mark may be able to stop you from using something close to their mark. Also, a mark that's similar to something else is obviously not unique, and unique is exactly what you want out of a trademark.
  • Why shouldn't I file the application myself or have an online service file it for me?
    There are a few reasons you might want to hire a lawyer to do those things. If you file it yourself you won't have the benefit of having someone that knows what they're doing counseling you on all the problems and issues that might come up. If your registration is initially rejected, a discount online service likely won't do anything but tell you it was rejected and not be willing or able to do more.
  • Can I trademark my name?
    Maybe. If you're using your name to identify a product or service, then it can be registered. Often this comes up when a celebrity want's to sell a line of products, but people have registered their name for things like personal appearances. Registration can be a little more involved, but it's possible.

    Of course, realize if your last name is Guinness and you want to register your name for use on your micro-brew line that you'll probably run into trouble.