Author: Christopher Hamel-Smith
To compete in the global and virtual marketplace on the Internet, we have to invest in building our reputations in target e-markets. We must almost literally burn - or brand - our company, our products and our services into the customer's mind. This means that we have to use our trademarks - or brand names - as well as of our domain names ("yourname.com") as key strategic assets. We must therefore be aware of the practical steps that we can take to enhance and protect the commercial value of these critical business assets.
Our first step must be to increase understanding within our companies of the strategic value of these intangible assets as we move into e-commerce. Developing and protecting these assets will not be inexpensive. We can only justify this expenditure when our companies recognize it as a valuable investment rather than an unnecessary cost.
Of course, this has always been true even in conventional business channels. Successful businesses have long invested heavily in protecting their trademarks in worldwide markets. However, the relatively low cost of conducting e-commerce across the globe, via the Internet, makes the management of these issues critical to the survival and success of a far wider range of companies. This means that we must now tackle these issues more urgently and professionally than ever before. And we must now consider how we can do so not only in Trinidad & Tobago, or Caricom, but also on a global basis.
As we make our plans for e-commerce, our next step will be to decide if to develop new trademarks for the new electronic marketplace. Frequently, if we decide to use new brand names in our target e-markets we will also want to use these as domain names for our web sites. This has proved to be a successful strategy in some cases. Two famous examples of this approach are "amazon.com" and "yahoo.com". Another strategy that has worked well for some is to extend an established trademark to the Internet. The success of "barnesandnoble.com" is an example of this alternative.
In considering these choices, we need to assess whether our prospective and existing trademarks and domain names are sufficiently "strong", from a legal perspective, to meet our business objectives in the new global e-markets. Legally "strong" trademarks are those that are well suited to do what trademarks are meant to do i.e. distinguish our products or services from those of others. Unless there are powerful business and marketing reasons to do otherwise, legally "weak" trademarks that do not effectively distinguish our products and services should be avoided.
There is no single method for avoiding "weak" trademarks. However, there are a number of factors that should be considered. Trademarks that merely use ordinary words to describe your product or service (for example, "The Book Store") are very "weak". The same is true of trademarks that describe some characteristic of your product or service (for example, "Great Books") and of trademarks that use other common words such as people's names (for example, "Brian's Books") or geographic terms (for example, "The Caribbean Book Store"). In all of these cases, these trademarks will receive little, if any, protection under the law and you are unlikely to be able to stop competitors from using the same or a similar description.
At the other end of the spectrum, trademarks that are unique such as invented words (for example, "Kodak" and "Xerox") are very "strong". Next in line are those that are arbitrary, in the sense that their recognised meaning does not relate to the product or service with which they are used (for example, "Apple" as used for computers and "Amazon" for books) followed by trademarks that cleverly suggest, but do not expressly describe, a feature of your product or service.
Clearly, we must ensure that the legal tail does not wag the commercial dog. We would be stupid to select legally "strong" trademarks or domain names if they do not reinforce the image that we wish to create in the minds of our target customers and help us to sell our products and services. Marketing strategy must therefore dominate our judgements when we are selecting our trademarks and domain names for use in e-commerce. At the same time, we should also assign appropriate weight to the relative "strength" of our potential trademarks and domain names when we are making these crucial decisions.
After assessing the legal "strength" of our existing and prospective trademarks and domain names, we also need to ensure that our use of them is not likely to infringe the rights of prior users. And we must register and use them in ways that protect and enhance their value. In my next article, we shall examine these further steps along the road to success in e-commerce.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
