Entrepreneurs and others often hear and read about the need to “create a brand” to market services or products. Indeed, there is a marketing trend suggesting that individuals need to “brand themselves” to achieve personal, financial and career success. This emphasis on “branding” can create some confusion since “branding” and “trademarking” are often seen as synonymous. But, “branding” is a broader concept that involves the strategic use of creating trademarks and registering those trademarks. Here is a quick primer.

Trademarking: The Narrower Concept

Trademarking involves creating a mark, logo, design, catchphrase, or something similar that uniquely identifies a commercial source for a product or service. Trademarks are entitled to legal protection and a trademark owner can prevent another from using a trademark already being used. To maximize the legal protection for a trademark, the trademark should be registered. For national protection, the trademark should be registered with the US Patent & Trademark (“USPTO”). Trademarks can also be registered at the state level for trademarks used wholly within the boundaries of a state. There are several requirements for registering a trademark including:

• Continual use of the trademark in commerce
• Proper and consistent use of the trademark in commerce — such as placement ON a product or packaging or use with advertising and signage
• The trademark must function as a trademark in that it must identify a company or business making/selling a product or offering a service
• In the application for registration, the trademark must be specifically identified as associated with a class of products or services
• And more

As can be seen, a trademark has an explicit commercial focus. In effect, a trademark is aimed at getting consumers to purchase a product or service. The trademark helps consumers remember a product/service, locate the product/service in the marketplace and creates consumer loyalty. A successful trademark will — hopefully — evoke certain emotions and feelings like trust and loyalty in the product/service. A good trademark will also create a business reputation for things like consistent quality, fast service, luxury, etc.

Branding: The Broader Concept

Because trademarks must satisfy legal requirements for registration, by definition, trademarks are the narrower concept. By contrast, a brand is not necessarily intended for registration and can, therefore, be much broader. As noted, trademarks have a commercial intent, whereas a brand can focus on other benefits such as social and community connections, lifestyle and environmental messages and many other factors. A successful brand creates associations in the minds of consumers that go beyond mere product identification. A brand can have the power to create communities of loyal customers who advocate for the brand to their families and friends. These community members can be part of a brand even if they are not regular customers of the particular products or services offered.

Legal Protection: What a Trademark Provides That a Brand Cannot

The most important practical difference between a brand and a trademark is enforceability. A brand, standing alone, has no legal protection. The law does not recognize “brand” as a legally protectable category. What the law protects are trademarks — specifically, the marks, logos, names, slogans, and other source identifiers that have been used in commerce and, preferably, registered with the USPTO.

When a business has a federally registered trademark, it gains:

• Constructive notice nationwide. Every business and individual in the United States is deemed to have legal notice of the mark’s existence from the date of registration. This means a competitor cannot adopt a confusingly similar mark after that date and then claim it did not know the mark existed.
• A legal presumption of validity and ownership. In any infringement proceeding, the registrant is presumed to own the mark and to have the exclusive right to use it nationwide in connection with the registered goods and services.
• The ability to use the ® symbol. Use of ® with an unregistered mark is a federal crime under 15 U.S.C. § 1117. Registered mark owners can use ® to publicly signal the registration and deter infringers.
• The basis for incontestability after five years of continuous use. Once incontestable, the registration cannot be challenged on the grounds that the mark is merely descriptive or that a prior user has superior rights based on likelihood of confusion — eliminating two of the most powerful arguments available to challengers.

What Elements of a Brand Can Be Trademarked

A brand typically encompasses far more than just a single trademark. Understanding which brand elements are eligible for trademark protection — and which are not — helps businesses make strategic registration decisions:

• Word marks — The brand name itself, if distinctive and not merely descriptive of the goods or services offered, is the most valuable and most commonly registered trademark. Strong word marks are arbitrary (like “Apple” for computers), fanciful (coined words like “Xerox”), or suggestive (implying but not describing a product characteristic).
• Design marks — Logos, graphic elements, and stylized versions of the brand name can be registered as design marks. Many companies register both a standard character word mark and a stylized logo as separate registrations to maximize protection.
• Slogans and taglines — Catchphrases used consistently in advertising can be registered as trademarks if they function as source identifiers rather than mere praise of the goods. “Just Do It” (Nike) and “I’m Lovin’ It” (McDonald’s) are examples of successfully registered slogans.
• Trade dress — The overall visual appearance of a product or its packaging — including colors, shapes, and design elements — can be registered as trade dress if it is distinctive and non-functional. The iconic shape of a Coca-Cola bottle and the color scheme of Tiffany blue are trade dress registrations.
• Non-traditional marks — Sounds (the NBC chime), colors (UPS brown for delivery services), and even scents (in very limited circumstances) can be registered as trademarks if they have acquired distinctiveness as source identifiers.

Brand Elements That Cannot Be Trademarked

Not every component of a brand qualifies for trademark protection. Businesses should understand these limits when planning their IP strategy:

• Generic terms — Terms that are the common name of the goods or services cannot function as trademarks. “Computer” cannot be trademarked for computers; “Bicycle” cannot be trademarked for bicycles.
• Merely descriptive marks — Marks that directly describe a feature, quality, or characteristic of the goods or services are not registrable unless they have acquired distinctiveness (secondary meaning) through long, exclusive use. “Cold and Creamy” for ice cream would be refused as merely descriptive.
• Brand messaging and advertising copy — The narrative content of advertising campaigns, brand manifestos, and marketing copy is protected, if at all, by copyright rather than trademark. Copyright protects original expression; trademark protects source identifiers.

Contact Revision Legal

Revision Legal’s trademark attorneys help businesses identify which elements of their brand are eligible for trademark protection, develop a registration strategy, and enforce their marks against infringers. Contact us today to discuss your brand’s trademark portfolio.