Audit, Compliance and Risk Blog

Intellectual Property Law, Trademarks and Creating a Brand

Posted by Tina Loza on Mon, Sep 10, 2012

Tina LozaI find that, because I run my own practice, I spend a lot of time networking, meeting people and learning. One of the “hot topics” of conversation I often encounter is “branding”, and how everyone wants to establish, and use, their new brands consistently on social media and in other avenues.

However, because I am a trademark attorney, while I find branding interesting for my own practice, I feel like branding and trademarking are different sides of the same coin. A trademark is a symbol (word, logo, slogan) that a business uses to link a service or product to that business. Branding is about “promoting” a trademark as a brand name. Trademark registration is about protecting that trademark. The reason this is even important at all is because a trademark is an asset of a business – when pricing a business during the business valuation process, a trademark will have a monetary value. The better the brand, the more value!

A good brand to “market” is not always easy to register. In other words, a descriptive mark may tell people exactly what the product or service is but it will not translate into a registerable trademark. I spend a lot of time counseling clients about what their chances are of getting a trademark and the problems I see arising. And, though I am not a branding expert, I often counsel people when I see red flags with a brand.

Here is an example to illustrate the problem because it can sometimes seem counter intuitive. Apple® for computers was probably very easy to register because the mark is completely arbitrary as it relates to computers. But, think about the consumer in 1977 hearing about an Apple. They may have been thinking, “I really like to eat mine with peanut butter.” The link to computers needed to be established. So, initially, it was a great registerable trademark but, thereafter, difficult to brand.

Now, let’s compare that with the trademark VISION CENTER. A consumer probably knows what the source of this mark provides – optical and ophthalmic services, glasses, contact lenses, etc. So, this mark is easy for the consumer to identify. But, because it is completely descriptive of the services, this mark is also pretty much impossible to register. You cannot register words such that it would take descriptive words out of the everyday lexicon.

Those seeking to create a brand therefore really need to spend significant time thinking about their marks and whether they are “good” marks to brand and otherwise. Fundamental things to consider include:

  • the availability of the domain name

  • whether people will even know what it is

  • is anyone else using a similar mark already (with similar or dissimilar goods or services)?

This will save time and money in the long run. For example, imagine if you could not obtain the “dot com” of your trademark and you have already spent money getting a trademark on file. Or, imagine if the name of your food product turned out to also be the name of a toilet cleaner? Um, yuck. I know it is exciting to start a business and roll out new products or services but there is so much wisdom in talking to a branding expert and an attorney before investing money in the symbol of your business.

About the Author

Intellectual Property expert Tina Loza has successfully defended and protected Fortune 500 companies, small businesses, and start-ups. Tina Loza is an Intellectual Property management attorney and the Managing Partner of Loza & Loza, LLP, a specialized legal practice with offices throughout Southern California, that supports clients worldwide with patent, trademark, copyright, and Internet law needs. For a free consultation or more information contact Loza & Loza, LLP.

Tags: Business & Legal, Internet