October 2012 | Vol. XI - No. 10
Brand Planning: Protect Your Trademarks and Intellectual Property
Toy manufacturers generally have very large trademark portfolios, which tend to accrete over time. Therefore, it is valuable to take time to view them from 30,000 feet to find out what to prune, what to add, and where to focus marketing energy and dollars.
Moreover, no matter the size of a company's trademark portfolio, from time to time it is useful to make sure that company policies are in place to ease and streamline day-to-day communications within the company regarding trademark protection. Such "Brand Planning" must be focused to encompass specialized issues facing individual companies. However, there are some "bones" with which to start.
The types of marks the company selects create far-reaching consequences, so it is strategic to determine which types of marks the company generally prefers. This provides the company with information to help budget for trademark registration and protection. Descriptive terms can take a long time to qualify for protection, and they often are expensive to protect. However, descriptive marks give consumers an immediate idea of a product's characteristics (e.g. ARTHRITICARE for arthritis pain reliever). Fanciful marks are perforce somewhat nonsensical when applied to a product, so consumers have to be educated about them – but they are much easier to register and protect (e.g. EXXON for gasoline).
The key is to educate the workforce about how to select a mark and what the consequences of choosing a particular mark are likely to be. Marketing departments have a quick rate of turnover. Therefore, yearly trademark training sessions are helpful in keeping everyone on the same page – and they create a framework in which the company can revisit its overall brand selection process.
In addition, brand planners should look for new marks. Any symbol can be a mark, including shapes, colors, packaging design, and even scent and taste. Often product designers are unaware of that. Educating them, and facilitating communication between marketing and the designers will help the company create additional intellectual property that will add value to the company's trademark portfolio.
One of the principal responsibilities of legal with respect to trademarks is to determine whether the company's proposed marks infringe any prior marks. This type of clearance is often time consuming and costly, particularly if a mark is to be used internationally. It would be ideal to search to see if a mark is available in every country in the world, but that often is too expensive.
A Brand Plan should set out where to search a mark and how extensive searches should be. There are myriad factors here, and they differ by mark. Among them is the importance of a mark (i.e. is it a primary brand, or a secondary mark, such as a slogan?). How long will it be used? Can it be changed if it infringes, and how long will that take? Some companies search only in countries where sales volume exceeds a particular level. Others take extra precautions in countries where counterfeiting is a problem.
Brand Plan development also presents an excellent opportunity to consider and adopt internal procedures for submission of marks for searching – either through emails or, more efficiently, through a form available on the company's intranet.
As with clearance, it would be ideal to register every mark everywhere, but that is often too costly, except perhaps with respect to a company's most important marks. The considerations when determining where to register are similar to those with respect to searching, namely, such factors as projected sales volume per country and importance of the mark.
Licensing plans come into play too. If a company licenses its mark in a particular jurisdiction (and, as is often the case, warrants that it owns the mark there) then the company should file an application. There are pros and cons to taking advantage of various treaties regarding trademark registration. The company can benefit from a policy stating when to use them.
Evaluation of existing registrations usually exposes the need for gap-filling. Do the company's registrations cover the right goods? Are any registrations vulnerable to cancellation? If so, re-filing may be advisable. Have new countries gained in importance such that more registrations are warranted? All of these factors should be considered as part of a Brand Plan.
In addition, brand planners should consider options for protection other than trademark registration. Design registrations may be available in Europe and getting them may be fast and cheap. Design patents are available in the United States. Often a company can carve out a whole category of products that are better protected with a design registration or as both a trademark and a design.
If company employees do not use marks correctly, no one else will. Employee education seminars should include usage guidelines. Written guidelines available on a company's intranet are valuable. Typical guidelines include reminders to use marks as proper adjectives, to distinguish them from surrounding words, and to display them consistently.
Obviously, in a world that includes the GOOGLE logo, which changes every day, and an ad campaign asking people to "Bing, and Decide" guidelines may sometimes have to be relaxed. However, deviation from typical rules heightens the possibility that a mark will become generic, so whether a company goes this route is a big decision.
"Genericide" of marks is a problem with teeth. Many once famous trademarks like CELLOPHANE, ESCALATOR, DRY ICE and TRAMPOLINE fell into the public domain because companies allowed them to be used as common names for unique product (e.g. escalator, rather than Escalator moving staircase). Usage guidelines, once developed, must be monitored and enforced.
Toy manufacturers sell to retailers, who obviously use the manufacturers' marks. In addition, fans undoubtedly will create websites, and also will want to use the company's marks. To facilitate proper usage by third parties, many, if not most, companies now have guidelines available on their web sites, as well as downloadable logos allowing for proper reproduction. As examples, Amazon's guidelines for use of KINDLE are available here. Groupon's guidelines are available here.
Media use also requires monitoring to prevent and/or alleviate the risk that a mark will become generic. Often, a simple letter requesting that a media outlet use a mark correctly will do the trick. A more aggressive approach is to advertise that a term is not generic to attempt to curb improper usage. For example, Xerox reportedly has advertised “When you use ‘xerox’ the way you use ‘aspirin,’ we get a headache.” The goal here is to keep people from using "Xerox" as a synonym for "photocopy."
Trademark infringement occurs every day. Companies have to combat it, but they very likely cannot effectively combat all of it. Yet another cost benefit analysis is required. Different types of infringement warrant different responses. Toy manufacturers often attract ardent fans who use marks incorrectly in unlicensed ways that damage the company's rights. But a fire-breathing cease and desist letter usually is not the way to correct these uses, particularly because such letters can and do show up on the Internet, to the detriment of the company's reputation.
On the other hand, counterfeiting is a huge problem, suffered by virtually every manufacturer. Anti-counterfeiting is a little like playing a Whac-a-Mole® game. Counterfeiters, particularly those operating over the Internet, tend to disappear when they receive a cease and desist letter, only to pop up somewhere else. Depending on the budget, seizure of product with a concomitant asset freeze may be the way to stop these entities.
Policy with respect to domain names also presents many options. Typically, domain name infringements can be categorized. Fan sites for example, sometimes can be handled with a form license. Other domain names merit an action under ICANN's Uniform Dispute Resolution Policy – which contemplates the filing of a complaint, followed by a decision by one or more arbitrators within a short time frame. Serious infringements may merit a suit in federal court.
Developing plans for dealing with different types of infringement is efficient. Given that trademarks benefit from a constant low level of enforcement, a standardized method of dealing with infringement is valuable.
In a Nutshell
A Brand Plan should address all of the policy issues described above. When companies implement plans directed to existing trademark portfolios, they should audit their existing marks to find and fill holes, or prune marks in which they are no longer interested. Toy companies often have big portfolios, so the audit helps keep portfolio management cost effective. Such an audit also may help companies capture and monetize non-traditional trademarks, like package design, or product scent. Every company can benefit from a considered plan on how to develop, properly promote and enforce trademarks. Trademark assets, managed in a considered way, add significant measurable value to the company that owns them.
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Writer's Bio: Janet A. Marvel is a partner at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP in Chicago. Throughout her career, Marvel has helped some of the world’s leading companies protect their brands through proactive brand planning and enforcement. She also works with clients to develop training programs to ensure employees know how to manage a brand for maximum protection. In addition to her work at the firm, Marvel has taught at Northwestern Law School. She is co-author of the treatise TRADEMARKS AND UNFAIR COMPETITION (3rd ed. 2007) and was voted an Illinois Super Lawyer by her peers. Read more articles by this author
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