If you plan to present your trademark attorneys with a "final" name or logo for registration, bad news may await. Matteo Mariano explains why trademark registration is more than a formality and how to avoid spending time and effort on branding that you can't protect or that you may be blocked from using.
It's a common scenario: someone in your business pitched a new product concept, and the idea took off. After a few weeks or even months of hard work, the concrete product or service takes shape, and the team starts working on its launch. The marketing team gets involved, and the ideas are buzzing. The project team starts building a campaign around a name, colours, one or more slogans and even the packaging. Depending on the company's size, an external marketing consultant might come into play. The branding project has already cost tens of thousands of euros, from internal resources to external consultants, but things are moving forward.
After a few constructive meetings, a couple of winning proposals get selected, and the team pitches these to the chief marketing officer (CMO), who champions one or two proposals to the CEO and board of directors. What a ride! Both the CMO and the CEO have picked their favourite branding strategy (including a name and logo), and the company's leadership signed off on the branding project.
Only then does someone think... "Let's call our trademark attorneys and ask them to register our name and logo. After all, it should take only a few days; it's a mere formality... isn't it?"
Typical trademark pitfalls in a branding project
It's at this point of the project that reality hits. The trademark attorney expresses doubts about the registrability of the name or logo as a trademark. Plus, a few of the company's competitors are already using similar marks. The risks that the trademark office rejects the trademark or that a competitor files an opposition cannot be ignored. What to do now, especially since the company has spent thousands on the branding project and, more importantly, the leadership team has chosen their favourite marks? Who will be the scapegoat who will have to tell the CEO, CMO, and eventually the board that quite a lot of money was wasted and that the company will have to drop its favourite pick?
When to involve trademark attorneys in your branding projects
We hope this is just an abstract nightmare for you – but to make sure you avoid a similar deadlock in the future, follow the four trademark tenets below:
- 1. Map out the branding process and identify a potential "point of no return"
When you work on a new branding project, prepare a map laying out all its components and a timeline identifying the milestones and decisive moments. While brand protection ought to be on your mind from the beginning, it can be a waste of time and energy to discuss trademark registrability too early in the process. If the project is still at the brainstorming stage, let your colleagues get creative. Once you have a shortlist for the next stage, then you can put on your trademark protection hat and think about their registrability. This is the point of the next tenet.
- 2. Use free training materials on brand protection
Once you reach the selection stage, take the time to look at the helpful resources prepared by IP offices, your external trademark attorneys (such as our comprehensive white paper 'Mind the gap: How to integrate IP into brand development'), and your specialist IP colleagues. These presentations often cover the basics of brand protection and can be incredibly useful in the early stages of your branding project by providing a refresher on the basics. For example: do the marks and logos on your shortlist satisfy the criteria for distinctiveness and are they non-descriptive? Could they potentially offend public policy or accepted principles of morality? The free training materials provided by IP offices and trademark attorneys can help you use your common sense to identify issues that you might want to investigate further.
- 3. Identify the most important elements of the brand you are building
Keeping in mind these trademark basics, the next step for you and your team should be to identify the core elements which make up the brand identity you are building. These core brand elements can relate to the product or the service, the packaging, the overall values of the company, the specific product series, etc. Ask yourself: why are these elements important, and what do they highlight?
This exercise will prove useful once you involve your trademark attorneys. Is a trademark registration really the best way to protect certain brand elements – or should you consider a design? Which names should also be domain names?
- 4. Involve your trademark attorneys before going to the CEO or Board
As soon as your branding project outgrows the embryo phase, reach out to your trademark attorneys and share with them the shortlist of potential marks or logos which your team would like to submit to the company's leadership for approval. Talk about the core brand values identified in the previous step. Share your questions and concerns and have your trademark attorneys perform informal checks and quick availability searches. This will help you eliminate first the names or logos which have low chances of getting registered, so you can present a solid selection of marks or logos that are reasonably protectable and available to your leadership. This also decreases the risk of you having to be the bearer of bad news regarding the protection of the chosen brand identity. Nevertheless, it is wise to remind your leadership that some elements might have to be adapted to ensure registration or availability of the brand.
Brand protection: the early bird gets the wor(d)
In conclusion, think about brand protection as soon as possible. This is not to say that you should always file as soon as possible (sometimes later will be better) but rather that brand protection should be on your mind as of the very first stages of your branding project. This early effort will ensure better results down the road.
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.
