Wednesday, May 25, 2016

A trademark or service mark is a brand identifier. Every company offering products or services has at least one. While the name of a product or service tells consumers what it is, the associated mark tells consumers who offers it to the public.

The selection and use of a brand name involves a number of important decisions that have both marketing and legal implications. Failing to understand and accommodate those implications can expose a startup to increased marketing costs and legal exposure. Accordingly, a startup would be well-advised to follow these seven simple rules:

Keep in mind the purpose of the mark. A mark is meant to identify the source of a product or service to consumers, so it must be unique in the industry in which it is being used. Though it is advisable to engage a professional to conduct a full clearance search for each prospective mark before it is used, searching the Trademark Electronic Search System (TESS) can often provide preliminary information about existing marks that are similar to a prospective mark. Select a mark that does more than simply name or describe the product or service. A generic term is incapable of functioning as a mark. A descriptive term can only function as a mark upon proof that consumers actually recognize the mark as a source identifier. The best marks are devices invented for the sole purpose of acting as a source identifier (e.g., EXXON®, XEROX®) or that have a common meaning having no relation to the products or services being offered (e.g., APPLE® for computers). Create a mark and a separate generic name for new products and services. The product many people refer to as a “Band-Aid” is actually correctly described as an “adhesive bandage.” BAND-AID® is a trademark that identifies adhesive bandages sold by Johnson & Johnson Corporation. Many companies may produce and sell adhesive bandages, but only Johnson & Johnson Corporation may produce and sell “Band-aids.” Always use a mark as an adjective qualifying a generic noun that defines the product or service being offered. This rule directly follows Rule Nos. 1 and 2. A mark should always be used to identify the source of, but not describe, a product or service. For example, a child with a skinned knee needs a BAND-AID® adhesive bandage, not a “band-aid”; a person uses the GOOGLE® Internet search engine to find information about “trademarks,” she does not “Google” “trademarks.” Display the mark consistently each time it is used. Using a mark in a consistent fashion supports consumer recognition of the mark, which strengthens the mark legally and increases its marketing power. Consistency demands that logos always be used in the same colors and location and that text marks always be used in the same font, color, and style of text. When using a text mark, display the mark in a manner that distinguishes it from surrounding text, such as in all capital letters or italics. Such use (e.g., BAND-AID® adhesive bandages) will make clear to consumers that the text is intended to be a brand name or source identifier, not a common descriptor. Use the mark with a symbol indicating its status as a mark. Marks that are issued registrations by the United States Patent and Trademark Office are designated by a ®. Unregistered marks are designated by a ™.

These seven rules of trademark selection and use provide startups with the foundation necessary to properly establish a brand identity that is both valuable and legally-protectable.