Lots of time, money and heartache is wasted in the brand design process because people don’t understand the basics of intellectual property law and don’t take proactive steps to clear and protect their brand assets. Many find out their name and/or package design can’t be registered and legally protected, or worse – they find out they’ve unknowingly infringed on someone else’s intellectual property when they’re slapped with a lawsuit. In this article, you’ll find out the key steps you should take to create an ownable brand that can be legally protected.
What’s the Worst That Can Happen If I Don’t Properly Vet My Brand Design?
A company called White Oak Spirits provides a cautionary example of what can go wrong. Based near Miami, White Oak Spirits wanted to launch a hip, luxury vodka label, WHITE OAK. They gave a graphic designer a sketch for a WHITE OAK vodka label featuring an oak tree, and asked him to create professional graphics and bottle designs suitable for their luxury product. They took the designer’s work product and applied to register the Design Plus Words Trademark, WHITE OAK PREMIUM VODKA.
They also started printing labels, packaging their inventory, and undertaking an expensive national brand launch and social media campaign. They co-branded the campaign with Art Basel in Miami and high-profile events in LA, which generated millions of views and impressions on Instagram and Twitter for their WHITE OAK vodka brand. They spent around $100,000 to make all this happen.
However, they never properly vetted their IP.
Unfortunately for them, there was a decades-old registered mark WHITE OAK for wine, which also featured an oak tree on the label. To make matters worse, they never paid the designer for his work or obtained his written confirmation as to their ownership or right to use the label designs. Consequently, the designer obtained copyright registrations for the designs in his own name.
Shortly after the launch of WHITE OAK vodka, they were sued in federal court in California for trademark infringement, and the court issued an injunction barring all sales of the vodka. They were forced to pull all inventory and re-label as WATER OAK PREMIUM VODKA. (Perhaps not the best brand “pivot” we’ve ever seen.) Less than a year after that case settled, they were sued in NY federal court by the graphic designer for copyright infringement. One year later, they completely shut down.
This story highlights two of the primary concerns that are in the background of every naming and design project.
First, it’s difficult to find a brand name that is available and can be registered as a trademark.
There are literally thousands of beverage and food brands in the US alone. We now live in a world where importing and exporting as well as truly “global brands” are becoming increasingly common. This expands the number of potential IP conflicts and the legal complexity of regulations.
Additionally, registered trademarks for alcoholic beverages are deemed by law to be “related” to trademarks for restaurants, cheeses, non-alcoholic beverages, and even other types of alcoholic beverages that are different from your product, and therefore registration of any of these can also block registration of your mark for a specific alcoholic beverage.
A new trademark need not be “identical” to a registered trademark to be refused by the US trademark office on grounds of likely confusion, or to be deemed infringing by a court; it only has to be sufficiently similar, and the addition of a generic term or two will not help distinguish one mark from another.
The second underlying concern: What if my design agency creates something that gets me in trouble? And how can that happen, especially when they’re supposed to be creating original artwork?
Designers can create labels, graphics, and other deliverables that infringe on someone else’s copyright without ever actually seeing or copying that other work (including designs that are copyrighted in foreign countries). They can develop a design from scratch, creating an original work, only to find out there is something substantially similar already out there.
How is this possible? When you think about it, there are common communication goals for most brands within any category. Creating visual communication, including packaging design, based on qualities that are universal within a category can lead to designs that are similar to others. It’s worth noting that the U.S. Copyright Office’s database does not have helpful search tools that can readily help a designer determine if their creation looks like something that’s already been registered as a copyrighted work.
As a consequence, design firms cannot provide a guarantee that their design deliverables won’t infringe someone else’s copyrighted work – at best, they might be able to say that they did not copy their design or logo from anyone else and that they are not aware of any third-party work that the deliverable infringes or is likely to be found to infringe.
A Strong Brand Is Designed Around a Compelling Concept
It’s easy to spend a lot of money only to find out you have to start over. For example, a large corporate wine client engaged us to develop a completely new brand concept and package. They had a launch date set, and due to internal delays, fell behind on their timeline.
We worked together to develop a list of brand names and narrowed it down to three favorites that looked to be available at first glance. In order to meet their target launch date and allow time for their company approval process, they had us start designing packaging concepts based on their favorite name.
We went through two rounds of design before their internal legal team came back with concerns about using that name. We had to scrap all of the work done to date, and start developing a new package design for a name that did pass review. The cost of the restart in design fees was many thousands of dollars, and of course, they were now behind schedule on their launch date anyway.
As hard as it is when you’re excited, don’t start the visual design process until you receive results from your IP attorney on name availability.
To reinforce the importance of clearing your name first, let’s go back to the fundamentals of 21st-century branding…
- A brand is expressed through the brand name, the brand story, and the package design.
- Being unique makes it easier for your brand to stand out in the crowded marketplace and attract attention.
- It also makes your brand easier to protect thru trademark registration.
Remember, a brand is an idea, and all components of your brand need to work together to express that idea in order for you to have a compelling brand. You can’t design a package and figure it will work to “[insert brand name here].”
Best Practices for Designing an Ownable Brand, Step-by-step
You should build legal vetting into your brand development process. We recommend engaging creative agencies and IP attorneys who have expertise in food and beverage branding at the following points in the development process:
Step 1: Either on your own, or through your creative agency, you should start by developing a list of names that fit your vision and brand essence, then narrowing it down to 2 to 4 preferred names.
When our team develops brand names for clients, we do preliminary checks at public directories before presenting our list of name concepts. However, this is only a preliminary review. There are much more exhaustive searches needed before we can be confident a name is available. These require legal expertise.
Step 2: As soon as we’ve helped you identify one or more potential brand names, you should submit them to your IP attorney.
Your attorney will conduct a clearance search and assess the availability of the mark for registration. A good IP attorney will also assess the scope of similar brands in the marketplace that might cause your brand to be limited in protection, whether in the U.S. or, if you’re thinking of selling your goods overseas, in particular, foreign markets.
Step 3: After your IP attorney determines that your brand name is likely available, you should move forward with an intent-to-use trademark application. Depending on the timing of your product launch, and the elements of your label design, you may want to hold off on printing your packaging until after the application for the brand name has successfully gone through the “publication period” – this usually happens about 6-7 months after the trademark is filed.
Step 4: If there is a brand logo that will be used in conjunction with the brand name across most or all platforms, you may want to file a separate design trademark application to secure trademark rights in the logo. This application can also be filed prior to the product launch and sale of goods in the marketplace.
Step 5: Before using a prominent tagline on your website or marketing materials, you should also confirm that this is not likely to expose you to claims of infringement. Many people don’t realize that numerous simple catchphrases are actually registered trademarks.
Selecting Your Brand Name
What makes your trademark valuable?
Your trademark’s value lies in its ability to help you stand out in a positive way as the source of the goods, and the scope of protection that it will be afforded by the U.S. Patent and Trademark Office and the courts.
For example, during the Great Recession, some of the trademarks and intellectual property for American car manufacturers were taken as collateral for purposes of the government loan. There’s a lot of value in many of those automobile marks that we recognize and see on a daily basis.
What makes a word registrable and protectable as a trademark?
To be registered, the brand name can’t be generic (ex. CAR WASH for automobile washing services), it can’t be descriptive of the goods or a characteristic of the goods (ex. JOHN THE TRADEMARK LAWYER), and it must function as an indication of a single source of the goods with which the mark will be used.
Don’t get emotionally invested until the research results are available.
When selecting your brand name, you don’t want to start with just one mark that you feel you must have. Instead select 2 to 4 names you LOVE for legal research – many will not clear.
Evaluating risks – it’s not black and white.
Rather than a clear “yes” or “no,” your IP attorney may provide a list of potential concerns about your name choice, along with their recommendation on whether to proceed.
Category and Name Protection
Relatedness of non-identical trademarks used on non-identical goods creates a gray area, but a good IP lawyer in the food and beverage space can help you appreciate the potential issues.
For instance, a cheese brand with a similar name may represent a conflict for a wine brand. Risks are evaluated by looking at the USPTO database to identify identical marks or similar marks for both the same classes of goods and services and the related classes. A mark need not be identical in terms of the verbiage or design, nor need it be for your specific class of goods to be deemed a basis to refuse your marks registration.
Beyond the USPTO database, alcoholic beverage registration can be checked against the TTB’s COLA Database for a certificate of label approval, the internet, and winesearcher.com. A third party can also be hired to conduct clearance searches, both internationally and domestically.
Creative Pivot
You may choose to add modifier or an integrated design element to make your brand ownable and protectable. For example, if John is in love with the name “John’s Pizza” but it’s unavailable to register, then John could consider making a pivot in the name that will still capture the merits of the brand and will still be consistent with the values of the company. However, the pivot can’t entail a generic term (ex. pizzeria, ranch, vineyard, services). The name must be non-generic and preferably non-descriptive, while still adding value and making the business stand out in the market.
Cost and Time Needed for Legal Name Search and Application
The cost and time needed for legal name search and application averages around $2,000 per trademark, but costs can increase if there are challenges by the trademark office or third parties.
What happens if the US Trademark Office rejects my application?
If your application is rejected, there are multiple ways you can work together with your IP lawyer to try to find a workaround.
File a Refusal
You may be able to ask the Trademark Office to withdrawal on the refusal on various grounds. Some examples of this may include:
- Erroneous application of law
- Mistaken presumption of facts in evidence
- Overlooked legal or factual arguments
Many US trademark office “Examining Attorneys” get paid depending on how many marks they turn around. Due to this, and the sheer volume of marks and applications that come through, their time is limited when examining an application. Therefore, errors are possible in the analysis and refusal, which may lead to success in obtaining a withdrawal on a rejected application.
Reach Out To the Third-Party
You may decide to reach out to the third-party whose marks are cited as blocks to try to obtain a consent and coexistence agreement. This may entail limiting the description of your goods and/or use of your mark, including geographic limits, or limits to production levels.
Copyright and Other Types of Intellectual Property Protection
Thus far, we’ve discussed Trademarks, but that is just one piece of the puzzle.
Intellectual property rights can apply to design elements that are original. As such, the design itself can be registered as a Design Trademark, separate from the words that associate your packaging or brand, or together with it as a Design Plus Words mark. Beyond that, you may also seek Copyright protection for original designs.
The Scope of Copyright Protection – just the expression, not the idea
Copyright protection is limited to the specific expression, not the idea. For example, if a label has a grape leaf with an artistic rendition of purple, red and violet veining, one might be able to obtain a copyright registration for that work and the label. However, this will not prevent anyone else from putting a grape leaf on their label. The copyright simply protects that particular expression, not the idea of a grape leaf or grapevine.
Duration of Protection – a long time, but not in perpetuity
The duration of protection with copyrights is very different than with a trademark registration. A copyright registration can protect a design for a long time, but not in perpetuity. In contrast, a design trademark can be registered and protected in perpetuity, based on the use and filing of renewals overtime.
Trade Dress
Similar to packaging and trademark designs is the concept of Trade Dress. Trade Dress refers to the packaging associated with a product. This might consist of the label, box or bag in which the product comes, the capsule, and other elements of how the product or services are presented.
International Trademark
Upon applying for a trademark registration in the United States, the application can seek an extension of trademark rights into foreign countries and jurisdictions via the Madrid Protocol (i.e., the E.U.). The application to extend protections can be done before the US trademark is registered.
There are considerations of cost and time that should be factored in. For example, if you are unsure that you will be using your trademark in the U.S. and the E.U. within the next 5-10 years, than there is likely no basis to seek international use and protection.
Maintaining and enforcing your Trademark and/or Copyright
Once you have a trademark or copyrighted asset, there is ongoing work to do to maintain it.
Brand Usage Consistency
The trademark needs to be used correctly. For example, if John has registered “John’s Pizzeria” as his trademark he can’t go change the store signage and menu to go by “John’s” alone. However, subtle changes in design elements, such as a slight change in punctuation change will often be fine.
Renewals
Ensure that you complete Trademark and Copyright renewals. A professional can be hired to assist.
Product Extensions
Consider product extensions and new brands that are being used, or new iterations off of the registered brand. Consider if these are worthy of being registered on their own.
Policing Third-Party Usages in Cost-Effective Ways
What should you do if you see reference to a very similar brand? Contact your IP attorney and determine whether or not your rights are superior to the mark that you found and you believe is infringing. You might have a registration, but the other party might have been using the mark for longer and it was undiscovered prior to registering your trademark. Therefore, prior to sending any Cease & Desist letter it is important to conduct research.
What should you do if you’ve discovered others are infringing on your registered mark?
The right response is a function of the potential harm and the potential confusion that consumers in the marketplace will face. If it is a somewhat similar mark you may just want to send a letter notifying them of your registration, rights and scope of your usage. From there you can just monitor on an ongoing basis. However, if the mark is very similar and there have been instances of consumer confusion, at that point you probably need to make the infringer stop. This can be done through sending a Cease & Desist demand letter and by drafting and filing a complaint of infringement of Trademark, Trade Dress, Copyright, etc.
Writing a letter is less expensive than filing court papers, appearing in court or drafting complicated settlement agreements. It is important to weigh the cost and benefits of the various approaches.
It’s worth the time it takes.
When embarking on the brand design process, if you want to build an ownable brand that is legally protected, you must ensure you take the proactive steps to clear and protect your brand. Take the time to understand the basics of intellectual property law and consider working with a qualified IP Lawyer and/or brand design firm to ensure you’re fully protected.
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