Branding Selecting and Protecting Your Brand

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Kory Tate
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1 isummit October 1, 2013 Branding Selecting and Protecting Your Brand Orlando, Florida Courtney M. Dunn Registered Patent Attorney, Senior Associate 2011 Lowndes, Drosdick, Doster, Kantor & Reed, P.A. All Rights Reserved

2 Why should I care about branding?

3 $113.7 B $185 B $75.5 B $45.7 B BrandZ Top 100 Most Valuable Global Brands 2013, Millward Brown $112.5 B $69.8 B

4 How your brand can work for you Distinguish your business from competitors Be a revenue producing asset (sale or license) Be a working asset (security for loan)

5 How others brands can work for you Piggyback on the advertising and goodwill of well known brands. Just be careful It can also work against you.

6 Common Branding Mistakes Picking a brand without researching others uses first Picking a brand that can t be protected (or that is not worth attempting to protect) Improperly using a trademark

7 Dangers of Picking and Using the Wrong Mark Willful infringement - treble damages Rebranding after substantial investment Actual confusion of brand Expensive to fight infringement suit from either side MCSLEEP METRO

8 Advantages of Picking and Using the Right Mark Easier to prevent and stop others from using same/similar mark Makes your brand stand out among your competitors (you don't want consumers confusing your products/services for products/services of inferior quality) Easier to build goodwill / consumer confidence with the mark when consumers can clearly differentiate your brand from another's Avoids the cost of rebranding or litigating questionable trademarks

9 Brands are protectable under trademark law Any indicator (name, symbol or slogan) that distinguishes the source of a particular product or service. TM

10 Trademark Examples

11 Common Misconceptions Difference between company name and company s brand º e.g The Coca-Cola Company Corporation vs. COCA-COLA º Available corporate name (Sunbiz search) available or protectable brand Difference between company s domain name and company s brand º e.g. books.com vs. BARNES & NOBLE º Available domain names available or protectable brand Difference between describing goods/services and branding º e.g. automobiles for automobiles vs. LEXUS for automobiles

12 Words Phrases Colors Sounds Smells Shapes Apple, Yahoo, Motorola Life s Good, Write Once, Run Anywhere Home Depot Orange (NBC chimes) Plumeria scent for sewing thread Symbols

13 Descriptive* Suggestive Arbitrary Fanciful Pet Land Dairy Queen Apple Google * Allowable if distinctiveness has been acquired, e.g. McDonald s

14 Picking the Right Mark: Weak Marks Pet City Pet Town Pet Land Pet World Pet Village Descriptive marks provide almost NO scope of protection

15 Picking the Right Mark: Strong Marks Banana Avocado Apple Granny Smith Cherry

16 Plain Numbers º e.g 586 (Intel) º 7-Up is okay Scandalous Matter Disparaging Matter False Connection Government insignia/flags Names of the living Surnames* Geographically descriptive* Merely descriptive/mis-descriptive* Corporate name º GOOGLE is okay; Google, Inc. is not Any mark that would create a likelihood of confusion with a prior trademark generic Picking the Right Mark: What Cannot be Trademarked? *allowable if distinctiveness has been acquired

17 Picking the Right Mark Due Diligence Internet Search USPTO search only applied-for marks Clearance Search and opinion by an attorney

Common Law Legal Protections Available º Use in Commerce º Free º Use of the symbol State Registration º Available for marks used strictly inside a state º Attorney s fees º Use of the symbol Federal

18 Common Law Legal Protections Available º Use in Commerce º Free º Use of the symbol State Registration º Available for marks used strictly inside a state º Attorney s fees º Use of the symbol Federal Registration º Use of the symbol º Provides public notice of ownership claim º Creates a legal presumption of a party s ownership of the mark Exclusive right to use the mark º Treble damages for willful infringement

OVERVIEW OF TRADEMARK PROTECTION IN THE UNITED STATES

OVERVIEW OF TRADEMARK PROTECTION IN THE UNITED STATES Purpose of Trademarks Trademarks serve as indications of origin and quality. They represent the goodwill or reputation your business and its products/services