Eight Things Every Entrepreneur Needs to Know about Creating and Protecting Brand Identity

By John Blattner

Every entrepreneur knows the importance of establishing a strong brand for a new business or product line.

“Brand” is a somewhat nebulous concept. It’s been defined as the complete set of mental and emotional associations that consumers have with you and your products: not just who you are and what you sell, but what they think and how they feel about who you are and what you sell.

“Brand identity,” in turn, is the visual and verbal expression of a brand communicated by names, slogans, logos, and the like. It’s what triggers those mental and emotional associations.

So here’s the first thing every entrepreneur needs to know: Trademarks are the primary means by which we harness the power, and capture the value, of brand identity. Names, slogans, and logos that have been thoughtfully created capture brand identity more effectively than those that haven’t. And those that are properly protected and enforced are capable of guarding against “brand identity theft” more effectively than those that aren’t.

The dollars-and-cents value of trademarks can be enormous. Consider this: start with the market value of a successful company – the amount that a buyer would be willing to pay for it. Now subtract the value of the tangible assets: product inventory, machinery, buildings, everything down to the desks, computers, and paper clips. What’s left is the value of the company’s intangible assets: know-how, reputation, good will in the marketplace. Much of that intangible value can only be captured, for practical purposes, by trademarks.

The economic value of those intangible assets can be significant. If you can buy a soft drink company that comes with good recipes, modern manufacturing facilities, and efficient distribution channels, that’s good. Even better is to buy one that also comes with a trademark.

The economic value of trademarks is especially important when the time comes to sell, expand, or franchise a business. Trademarks are the vehicles by which the intangible values of brand identity are priced, transferred, or otherwise exploited.

I tell clients that my goals in helping them build a brand identity, and a trademark portfolio, are the same as their marketing department’s goals:

• First, to select names, slogans, and symbols that stand out in consumers’ minds as belonging to us – and only to us.
• Second, to establish and protect those marks so that they consistently convey our brand identity – and nobody else’s – wherever we’re doing business.
• Third, to do it all in a way that is cost-effective and that adds value to the enterprise.

There are a handful of key principles that make all this happen. The first is simply grasping the importance of brand identity, and recognizing the crucial role that trademarks play in creating and sustaining it.

Good News from Washington (for a change): Trademark Filings Just Got Cheaper

By John Blattner

The old joke is that the three least believable sentences in the English language are: “The check is in the mail,” “Of course I’ll respect you in the morning,” and “I’m from the government and I’m here to help you.”

But fair is fair, and I am happy to report that one arm of the government has done something very helpful indeed: the Trademark office has reduced the cost of filing trademark applications and renewals.

Once upon a time, all trademark filings were done on paper and via the U.S. Mail. That option is still available, but it’s expensive: you pay a $375 fee for each classification of goods and services in the application. Several years ago, the office introduced electronic filing. As an inducement to use the new approach, it lowered the fee to $325 for electronic applications. The strategy worked, and the vast majority of trademark applications are now filed electronically.

This month the Trademark Office introduced yet another option: the “RF” (“Reduced Fee”) application, which costs only $275. The catch is that you have to use electronic filing for all subsequent filings pertaining to the application. If at any point you revert to paper filing, you get hit with a $50 charge. But most sophisticated companies and law firms – like ours – typically do all their filing electronically anyway, so it’s not a big issue.

The Trademark Office has also reduced the fee for renewing a registration, from $500 to $400. Registrations are only renewed every ten years, so that’s not a huge saving in absolute terms. But when was the last time the government gave you a 20 percent discount on anything? (That’s what I thought.) I look forward to passing these savings along to clients going forward.

To read more articles from Brandmarking: Thoughts on the Creation, Protection, and Enforcement of Brand Identity, click here.

The Fight Against Counterfeit Products in Canada Just Got Easier

By Eric D. Lavers

Canada’s new Combating Counterfeit Products Act officially took effect on January 1, 2015. As part of the ongoing overhaul of Canada’s much neglected intellectual property regime, this new tool for content and brand proprietors in the fight against would-be counterfeiters should be viewed as a positive and welcome development.

At the heart of the new laws is a beefed up effort to control counterfeiting at the border. Going forward, border officials will be authorized (previously they weren’t) to voluntarily seize and detain suspected counterfeit goods without fear of repercussion. Simultaneously, the owners of Canadian copyright and trademark registrations will be able, under a “Request for Assistance” procedure, to direct the efforts of border officials by supplying them with advance information related to suspected counterfeiting of their goods.

Expanded definitions of copyright and trademark infringement will also give owners a wider array of options for enforcing their rights against others. Most significantly, in addition to the unauthorized sale, distribution or advertisement of goods or services protected by a registered trade-mark, it will also now be an infringement to manufacture, possess, import, or export protected goods for the purpose of sale or distribution. The same will hold true in certain circumstances for those activities undertaken with respect to labels and packaging for protected goods (as opposed to the goods themselves).

A final important change introduced by the Combating Counterfeit Products Act is the creation of new criminal offences of copyright and trademark infringement. These new criminal offences will cover acts of copyright and trademark infringement undertaken “knowingly” by a person – in other words, deliberately. The punishment for serious cases of criminal infringement will include a fine of up to $1 million and/or a 5 year jail sentence. Less serious offenses will carry a $25,000 fine and/or up to 6 months in prison.

If utilized effectively by brand and content owners, these new laws are sure to make a difference in the ongoing fight against counterfeiting.

More Change to Canada’s Intellectual Property Laws on the Way

By Eric D. Lavers

On October 23, 2014, as part of the fall budget bill, the federal Government quietly tabled the second in a series of substantial reform packages to Canada’s existing intellectual property regime. Following the introduction of new trademark laws earlier this year, a similar update of Canada’s industrial design and patent laws will take effect when the bill is passed.

The patent reform appears designed to harmonize Canada’s existing framework with that of its key trading partners, while at the same time making the system friendlier and more accessible to applicants. For example, a number of new provisions will simplify the process of filing and maintaining applications in effect. Unintentional abandonments of rights will also now have no impact on the validity of otherwise properly issued patents.

While not as extensive as the patent law reforms, the bill also includes many significant updates to Canada’s industrial design laws. Industrial designs offer a relatively simple and inexpensive mechanism for protecting the ornamental appearance (as opposed to function) of a product or article. Most significantly, the new laws will pave the way for Canada’s adoption of the Hague Agreement on Industrial Designs, which allows for design protection around the world through a single application.

By addressing notable deficiencies in the current system, these legislative reforms are both a welcome development and long overdue.

Inside the World of Trademarks with John Blattner

John Blattner knows brands for a living. In particular, he knows what is trademarked, what can be trademarked, and how to stop another brand from infringing on your trademark. Why is this important? Because trademarks can protect a brand’s recognition and equity and that’s where trademark attorneys like John come into play.

John is a Member in Dickinson Wright’s Ann Arbor office. He practices brand creation and protection law, including trademark counseling, clearance, registration, maintenance, and enforcement both in the U.S. and overseas. He went into law after an 18 year career in publishing, marketing and nonprofit development which exposed him to his fair share of marketing and trademark issues.

“It was kind of a natural outgrowth [becoming a lawyer] of my publishing career,” John says. “I bumped into a fair amount of trademark issues that enable me to bring real-world business experience into my practice, including the fashion, financial services, cosmetics, sporting goods, automotive, technology, pharma, publishing and other industries.”

How can companies protect their brands? John says first to get clear on what trademarks you actually have. “I frequently look at a client’s web site and find names, slogans, designs, or other things that are functioning as trademarks but that the client isn’t fully aware of,” John says. The next step – especially when choosing a new trademark – is to do a clearance search to make sure someone else doesn’t already have rights: “There’s no sense setting yourself up for a cease-and-desist letter.” Then apply to register the trademark, not just in the U.S. but also in other countries where the business is or will be active. Finally, monitor the marketplace to make sure third parties aren’t infringing your rights.

All of these questions will form the answers to what John can do to help you protect your brand, especially if you feel another company or person is infringing on your brand. Trademark infringement can lead to confusion among consumers and dilute the strength of your brand in the marketplace. Proper protections need to be in place to combat trademark infringement.

John has extensive experience in IP enforcement, including a wide range of patent, trademark, copyright, and antitrust litigation in state and federal courts; appellate litigation in state and federal courts of appeals, including the Federal Circuit; and opposition and cancellation proceedings before the Trademark Trial and Appeal Board. All of this experience has led to an adjunct professorship at the Michigan State University College of Law where he focuses on trademarks and unfair competition.

“I teach my courses from a practitioner’s point of view,” says John. “You inevitably have to cover a lot of ground throughout the semester and I choose certain areas of law based on my experience. What I try to impart on my students is when you are learning an area of trademark law, to not only think about it from a lawyer’s point of view but to think about it as if you are the business owner as well.”

His prior career and his practical views on trademark law make John a valuable commodity to his clients. He hopes in the end, that his real-world experience and his passion for brand awareness will help his clients think about the legal implications first when trying to launch a new product/program rather than having to scramble afterwards when that inevitable cease-and-desist letter shows up on his client’s doorstep.

To learn more about John and his practice, please click here and to learn more about John’s insights into branding and trademark, check out his newsletter, Brandmarking.

How to Win the Olympic Gold Medal in the Super Bowl of Trademark Infringement

By John Blattner

Like any red-blooded American sports fan, the realization that both the Super Bowl and the Winter Olympics are only a few weeks away makes my thoughts turn to only one thing.

Trademark infringement.

Both of these iconic events have famous trademarks with extensive legal protection – and owners who take their rights very, very seriously.

The National Football League owns trademark rights, not only in its own name and logo, and in the names and logos of all 32 member teams, but also in the word SUPER BOWL and related logos. The league has been known to take a dim view of people using its registered marks without permission.

Not that people haven’t tried, of course. Applications to register all of the following have been filed in the Trademark Office, and all have failed:

• Super Bowl of Motocross
• Super Bowl of Poker
• Sooper Bowl of Comedy
• Super Bowl of Portable Restrooms (I swear I didn’t make that up).

There are others. And those are only the ones that someone applied to register. Imagine how many there must be that weren’t applied for.

But the strength of the NFL’s rights pale in comparison with those of the people who run the Olympics, whose marks are protected not by the usual trademark laws but by their very own statutes, whose liability standards and potential penalties are especially stringent.

Here in the U.S., the Ted Stevens Olympic and Amateur Sports Act, 36 U.S.C. § 220501 et seq., gives the United States Olympic Committee exclusive control over the following symbols, terms, and phrases, among others:

• The Olympic symbol (five interlocking rings representing the five continents)
• “Olympic”
• “Olympiad”
• “Citius. Altius. Fortius.” (“Swifter. Higher. Stronger.”)

The statute permits the USOC to sue anyone who, without permission, uses the Olympic trademarks to market goods or services, or to promote a theatrical exhibition, athletic performance, or competition. A showing of likelihood of consumer confusion – usually the touchstone of trademark infringement – is not required. Other countries have their own statutes, which may differ in various respects.

Two years ago, the Summer Olympics in London produced a number of stories about small-town merchants who got nasty-grams from the sponsoring committee. Some of the situations – like the butcher who made a five-ring display out of sausage links – were mildly amusing. One shudders to think about what kinds of cease-and-desist letters they write in Russia…

The lesson is simple. If you’re thinking about using any Olympics- or Super Bowl-related words, slogans, or symbols to market your goods and services, think again. And talk to a trademark lawyer before proceeding.

Are you ready for the coming explosion of cybersquatting?

By John Blattner

The next wave of domain-name barbarians is gathering outside the gates. Here’s what you need to do now to keep your trademarks, and your e-commerce, safe.

Almost every business has had to deal with cybersquatters – pirates that launch web sites designed to divert customers by using domain names that mimic the business’s trademarks.

Until now, the war has focused primarily on domain names within the “.com” sphere. But the battlefront is about to expand – dramatically.

The international body that runs the Internet (called ICANN) has recently begun releasing new generic top-level domains (“gTLDs”). In addition to the familiar “.com,” this program makes it possible to set up a business name, a trademark, a geographic designation – virtually any word in any language – as a gTLD in its own right. Almost 2,000 applications for gTLDs were filed, and more than 1,000 will ultimately be granted. Because many of the new gTLDs will sell domain names to all comers without any attention to whether they are violative of someone else’s trademark rights, they will create a giant new arena in which domain name pirates can operate.

So what should you do now to protect your brands and your domain names?

1. Lock up the family jewels.

ICANN has mandated the creation of a Trade Mark Clearing House, in which owners can list their registered trademarks. It has also required that all newly-released gTLDs offer a 30-day “Sunrise” period in which owners of marks listed in the TMCH get first crack at registering them as domain names. In addition, during the Sunrise period and for sixty days thereafter, other parties that apply for those marks will be advised of the TMCH listing and, if they pursue their application, the owners of the TMCH-listed marks will be notified, giving them an opportunity to invoke various dispute-resolution procedures.

The Trademark Clearance House is now in operation, and it makes sense for brand owners to list at least their “core” trademarks there. These are the marks in which you have invested the most time, energy, and money; the ones most closely associated with your business; the ones you have already had to protect most often in the .com realm.

2. Plan now to make preemptive registrations in gTLDs of particular interest.

An important limitation of the Trade Mark Clearing House is that it protects only against domain names that are identical to your registered trademarks, not to common misspellings, typos, and so on. This leads to a second important step: being prepared to file preemptive domain name registrations for common variations of your brand.

Now is the time to identify specific gTLDs in which you will be especially interested in and to watch for their release dates. For instance, if you’re in the auto industry you will likely want to be active in such gTLDs as “.auto,” “.car,” and the like. As soon as the Sunrise period for one of your identified gTLDs opens, be ready to file immediately. This is an instance where the best defense is a vigorous offense.

Many brand owners were caught unawares years ago when the Internet burst upon the scene, and control of brand-related domain names became crucial. There’s no way to stop the next wave of cyberpiracy. But there’s also no reason not to be prepared for it.

Is This Really a Job for the Trademark Office?

By John Blattner

Legal proceedings involving mass murders and lurid sexual escapades get lots of media attention.

Trademark cases? Not so much.

That’s part of what makes the case of Blackhorse v. Pro Football, Inc., fascinating. It’s a trademark cancellation proceeding seeking to revoke six federal service mark registrations that include the word “Redskins” with reference to Washington, D.C.’s professional football team. The issue has attracted a lot of attention; you might even say it has become something of a political football (sorry, couldn’t help myself).

Whatever your views may be on the underlying issue of whether the use of “Redskins” as a team name and mascot is inappropriate and should be outlawed – and I will keep my own views to myself – there are at least two aspects of the case that are worth noting.

One is the fact that the case is pending, not in a federal court, but in the Trademark Trial and Appeal Board, the administrative tribunal of the U.S. Patent and Trademark Office. The TTAB hears appeals from trademark owners whose applications to register their marks have been denied. It also adjudicates pre-registration “opposition” proceedings against applications that the Trademark Office has approved, as well as “cancellation” proceedings against registrations that have already been issued.

Losing an opposition or cancellation proceeding does not mean that a trademark owner has to stop using its mark; the TTAB has no authority to issue injunctions (or, for that matter, to award money damages). Losing in the TTAB only denies registration of the marks – which can be a significant penalty, especially for marks, like those at issue in the Blackhorse case, that are exploited for licensing purposes. I sometimes recommend a TTAB proceeding as a relatively inexpensive enforcement option for clients wary of the angst and expense of a federal lawsuit.

This leads to the second noteworthy aspect of the case, which is that the federal Trademark Act is the only intellectual property statute that includes what amounts to a censorship clause. It provides for denial of registration to material that:

…consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…

15 U.S.C. § 1052(a). (Note that this statute was enacted in 1945, long before anyone had ever heard of political correctness.)

Of course, books and movies that contain rank obscenity and vile hate speech are routinely granted registration by the Copyright Office, and no one seems to think a thing about it. And the Patent Office routinely grants patents for devices whose uses may strike at least some people as objectionable.

Every year I ask my law school students whether they think a J.D. degree and a single course in trademark law qualifies them to render an official judgment on what is, and is not, “immoral” or “scandalous.” They find the very idea preposterous. But those are the only credentials that the examining attorneys in the Trademark Office have, and they perform this function as part of their regular job description.

The TTAB’s decision in Blackhorse won’t resolve the issue of whether the Washington Redskins need to change their name. But it will impact the commercial value of the Redskins trademarks, at least to some extent; and it will no doubt have more than a little public relations impact. Final trial briefs were filed more than a year ago, and oral arguments were heard way back in March; a decision is expected – oh, any old time now (this is an agency of the federal government we’re talking about, after all). Stay tuned…

Apple Retail Stores Receive Trademark Protection

By H. Jonathan Redway, Esq.

In Walter Issacson’s 2011 biography of Steve Jobs, Issacson recounts how in 1999, after returning to Apple, Steve Jobs began to interview executives to develop a string of new Apple retail stores. At the time, Gateway Computers was on the verge of bankruptcy after opening its suburban stores, and Dell was succeeding by selling direct to customers without stores. Nonetheless, Jobs correctly predicted that if Window users, in particular, were passing by and found the Apple store inviting enough, Apple would win.

Jobs envisioned that the stores would be minimalistic and offer places for potential customers to try things out. “The stores would impute the ethos of Apple products: playful, easy, creative, and on the bright side of the line between hip and intimidating.” When the final prototype retail store was completed in January 2001, the board approved going ahead so that Apple might take its brand to a new level and ensure that consumers did not come see Apple computers as commodity products like those of Dell or Compaq.

A notable feature of the stores was the Genius Bar. The idea of the Genius Bar surfaced during a retreat in which Apple team members were asked to describe the best service they ever enjoyed. Almost all of the participants mentioned service they received at the Four Seasons or Ritz-Carlton hotels. Apple’s first five store managers were then sent through the Ritz-Carlton training program, and it was there that the idea was born to create something new in the computer retail industry: a cross between a concierge desk and a bar. Staffed with the smartest Mac technical advisors, an oblong table with stools at the back of the store was named the GENIUS BAR.

On January 22, 2012, following a lengthy and contested process, the United States Patent and Trademark Office granted registered trademark protection to the design and layout of Apple’s retail stores. Initially, registration was refused because the claimed mark, a three dimensional configuration, commonly referred to as trade dress, was not – according to the examiner – perceived as a source identifier, but only as decoration or ornamentation. In its response, Apple argued that the law was well established by virtue of the Supreme Court holding in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 765 (1992) that a retail establishment’s trade dress can immediately be perceived as a source identifier and is thus capable of protection. In the alternative, Apple argued that if Apple’s particular configuration was not immediately perceived as a source identifier, that because of its tremendous success, consumers had come to recognize the configuration as a source of Apple products. To support its claim, Apple submitted hundreds of pages of evidence showing the success of Apple’s retail stores, consumer awareness of the configuration, and Apple’s marketing efforts to increase consumer awareness of its store designs. After considering the evidence, the United States Patent and Trademark Office granted the registration on the basis that the configuration has acquired distinctiveness and as such was recognized as a source identifier.

The mark covers the Apple store’s clear glass storefront surrounded by a “panel façade consisting of large, rectangular horizontal panels over the top of the glass front, and two narrower panels stacked on either side of the storefront,” and “cantilevered shelves below recessed display spaces along the side walls, and rectangular tables arranged in a line in the middle of the store parallel to the walls and extending from the storefront to the back of the store.” See U.S. Trademark Registration No. 4,277,914.

Although Apple did not claim the walls, floors, lighting or other features of the store individually, the placement of the various items are nonetheless considered to be part of the overall mark including the GENIUS BAR described as an “oblong table with stools located at the back of the store.”

The protection afforded Apple’s retail store design and layout serves as a reminder that trademarks need not be limited to words or logos, but may, under the right circumstances, include any number of non-traditional identifiers of source, including appearance, shape, color, sound, and even the layout of an originally designed and successful retail store.

The "Dot-Brand" Explosion: What You Need To Do Now

(Or: How to Make Sure Your Name or Trademark Doesn't Become a ".sucks" Web Site)

by John C. Blattner

Earlier this year, the company that manages the global internet address system (the Internet Corporation for Assigned Names and Numbers, or “ICANN”) accepted the first round of applications for new “generic top level domains,” or gTLDs – the part of an address that goes to the right of the dot.  Most businesses register domain names that use the familiar “.com” suffix or one of a handful of other available options such as “.org” or “.biz.”  The new program makes it possible to register a business name, a trademark – indeed, virtually any word in any language as a TLD in its own right.  Depending on whose crystal ball you consult, this “Dot-Brand” initiative could revolutionize the way the internet works, or hopelessly complicate it, or both.

The initial “application window” recently closed.  The list of applications offered a few surprises, a number of omens for the future – and some important action items for brand owners who did not apply for a gTLD this time around.

• One surprise was the sheer number of applications. Originally, ICANN was anticipating 500 or so. In the end there were almost 2,000 (at $185,000 apiece!) The unexpected volume slowed down the application process, and will surely slow the review and approval process even more.
• Many of the applications were for famous brand names (.chevy, .nikon, .walmart) and several were for geographic locations (.paris, .nyc, .amersterdam). The most interesting ones were for generic terms like .art, .tech, and .store, which will be of interest to a great many people.  Lots of brand owners in the auto industry, for example, may want to be part of the “.cars” domain.
• Not surprisingly, many of these generic domains are the subject of multiple applications: thirteen for .app; seven each for .mail and .news; nine for .shop. There will be a lengthy dispute-resolution process, probably culminating in an old-fashioned auction to the highest bidder, to see who ultimately gains control of these domains.

A recent survey of attorneys responsible for protecting trademarks found that while 91 percent were aware of the new gTLD program, only 36 percent had read the Applicant Guidebook, which explains how the process work.  That Guidebook, and the initial application list, suggests some important steps you should take now to protect your brand:

1. Make sure no one has applied for a domain that incorporates one of your trademarks. A formal objection period for addressing such issues is now open and will run until January 2013.
2. Identify “generic” domains of interest, and investigate the applicants and their business plans. If you’re in the financial services sector, for example, you’ll want to know who’s behind the applications for .bank, .broker, .finance, .fund, .insurance, .investments, .lifeinsurance, .loans, .money, .mutualfunds, and others.  A 60-day comment period, open to anyone, runs through August 12; if there is something ICANN ought to know about one or more of the applicants or proposed domains, now is the time to tell them.
3. Start planning for defensive domain-name registrations in appropriate generic and geographic domains.  Depending on the business you’re in, you may want to make sure you are the first to register your company name and key trademarks within appropriate domain names – before someone else does.  The “someone else” could be a competitor, or just an old-fashioned cyber-squatter of the sort brand owners have been dealing with in the .com sphere for years.  And don’t forget about domains like “.sucks,” where having someone else register your brand could be embarrassing.

The best defense is a good offense. Starting in October 2012, for a small fee you will be able to list your brand names in ICANN’s Trademark Clearinghouse; anyone that tries to register your brand as a domain name will be advised of your rights.