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Archive for the ‘trademark registration’ Category

There’s an old comedy bit where the comic offers to teach you “everything you’re going to remember from college, ten years after graduation.”  The crash course is offered at a hefty price, but much less than four years of actual college tuition.  There’s a little of that in what we’re going to discuss here today, except for the hefty price of course.

Once you absorb all the knowledge in this article, people will come from miles around to meet you and marvel at your Giant Trademark Brain. And the Law of Averages says that some percentage of them will buy your product, too.

In more than 20 years of advising business owners in the area of trademark law, I’ve noticed many little tidbits of knowledge that I find myself passing along to client after client.  These are things that most business owners and marketing people either don’t know at all or have enduring misunderstandings about. 

Each of these nuggets of information, standing by itself, is not very impressive – but knowing all of them will really increase your comprehension of the trademark process.  For that reason, I have decided to present them all in one place.  So gird your loins and get ready for a crash course in trademark knowledge.

Thing 1:  Trademark rights are created by use of the mark on your goods or services.  Registration of your mark is an important way to increase and extend those rights.

Thing 2:  There is no functional difference between “trademarks” and “service marks” – trademarks identify goods (for example, BUDWEISER® for beer) and service marks identify… that’s right, services (e.g., HOLIDAY INN® for hotel services.)  So for the rest of this post, let’s simplify things by calling them all trademarks, or just marks.

Thing 3:  You don’t register a trademark for “everything,” you register it for specifically identified goods and/or services that are spelled out in your application.  The more types of “things” you want to cover, the more you’ll pay in filing fees for the application.

Thing 4:  Give a lot of thought to what goods/services you want to cover before filing your trademark application, because once the application is filed you cannot broaden its coverage (you can only narrow it, by taking things out.)

Thing 5:  New trademark applications literally are filed every minute at the U.S. Patent and Trademark Office.  Once you decide on a mark and goods/services, file your application as soon as possible to minimize the chances that someone else will “beat you to the punch.”

Thing 6:  No, you cannot file a trademark application or keep alive a registration for a mark you have no current intention of using, just to “keep people away from it.”

Thing 7:  The designations TM and SM that you see everywhere really have no official significance.  They are used unofficially, to indicate that the user regards the name as proprietary.

Thing 8:  You may not use the ® symbol with your mark until your mark is actually registered (not just filed.)  After the registration issues, you should always use it at least once on every package, advertisement, marketing piece, etc.

Thing 9:  You should always search a new product name (the earlier the better) before committing to it or using it.  Not doing so is a dare to the Trademark Infringement Gods.

Thing 10:  Because trademark rights arise from use (see Thing 1 above), trademark searching is an art and not a science.  When searching for potential users of conflicting marks in the vast universe of information out there, you have to choose some logical place to stop.  Always remember that, for these reasons, no trademark search is perfect – just the best search reasonably feasible at the time it’s conducted.

Thing 11:  Minor differences in spelling and inventive spellings won’t make an otherwise infringing mark “safe” to use or register.

Thing 12:  In a similar vein, you probably attach a much greater significance to small product differences within your industry than the general public (or a judge) will.  This means that when comparing products to determine whether you infringe someone else’s mark, the judge is not going to be swayed by the argument that “no one could be confused because the products are totally different – theirs is a 6-pin device and ours is an 8-pin device!”

Thing 13:  When choosing a new name, remember that the more closely it describes the product (or some feature or function of it), the more likely you are to have problems with availability and/or protection.  I could give you a half hour on why, but just trust me on this.  You’re much better off picking a name that is not descriptive.

Thing 14:  Word mark registrations are inherently more flexible than logo/design marks, because use of a registered word mark as a part of your logo is covered by the registration.  The reverse is not true.

Thing 15:  Because of Thing 14, when first starting down the registration path (and anytime cost/budget is a large factor), it’s usually advisable to register the word form of your mark first and register the logo version when finances allow.

Thing 16:  It can take many months for an application to mature into a trademark registration, but there’s no reason to hold off on using the mark in the meantime.  Quite the opposite, in fact – usually you’re better off starting use as soon as possible.

Thing 17:  The time to think about whether your new name will actually be available for you to use is as soon as possible.  Yesterday, if possible.  A month ago, better yet.  Leaving that issue until the last minute invites bad decision-making and disaster.

Thing 18:  Most trademark infringement disputes are resolved through negotiation before any suit is filed, usually with the “junior user” being provided some time period to shift over to a new name.  But don’t take this as an excuse to go forward with a name you know is questionable, because the first sentence often doesn’t apply where the infringement appears intentional.  In those cases, the aggrieved party may go straight to court.

Thing 19:  Using or registering your new name as a domain name does not create trademark rights, unless you use that domain name in a trademark-like way on your website. 

Thing 20:  Similarly, merely registering your corporate name with your state’s secretary of state does not create any trademark rights or constitute any type of government approval for you to use the name as a trademark.

Thing 21:  In the trademark world, as elsewhere, what goes around comes around.  Don’t try to nestle up to a competitor by using a similar mark.  You wouldn’t want anyone doing that to you.  Don’t make me be your mom on this – Golden Rule, and all that.

This is not, of course, intended as a complete list.  Hopefully it is helpful, though.  If I get good response on this article, I’ll think up some more bits of important knowledge.  And then, dear reader, together we can venture down the uncertain path of the sequel.

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This series discusses trademark issues that arise in the context of band names.  My previous posts in the series have covered finding a name, registering that name, and avoiding problems when selling so-called “merch” goods, especially clothing, bearing the name.  To close out this series, I’d like to take a few moments to discuss exactly how it is that bands own their names, from a legal perspective.

"Hello and welcome to our partnership meeting! Sing along if you know the words!"

So, you’ve got yourself a band and things are going well.  The band’s name is becoming more and more well known, and the future looks bright.  Bands differ in many ways – they may play different music, using different instruments, in different venues, to different audiences, to different audiences.

Then again, anyone with any experience playing music will tell you that all bands have one thing in common:  they tend to break up, sooner or later.  When that happens, who owns the name?

To answer that question, which is after all a legal conclusion, you have to consider what exactly the band was…  From a legal standpoint, that is.  (And here’s a hint:  it’s even better to think about this issue before your band breaks up…)

Partnership Is the Default Status

The law of Illinois and Indiana, where I am admitted to practice (and also the law of many other states), presumes that when a group of individuals act together for a common purpose and when they share the profits and losses of those actions, they have created what is generally referred to as a “common law partnership.”  This includes people working together as a band since, when you stop to think about it, a band’s activities fit that general definition quite well. 

Without a written agreement to the contrary, the law in most states will assume a number of things about a band’s partnership.  One of those assumptions the law makes is that all members of the partnership have equal ownership of, and an equal right to use, all the assets of the partnership.  In the case of a band, those assets include the band’s name. 

Problems Under Partnership Law

So under general partnership law, unless there is a written partnership agreement to the contrary, all band members/common law partners would be equal owners of the band name and any associated logos.  In addition, any current or former member would be permitted to use the name.  Because trademark rights are determined by who uses a mark and not who created it, each of the members of the Band would be an equal co-owner of the group name under trademark law.

Given the propensity of musicians to join and quit bands, the prospect of former band members having some ownership interest in the name tends to be a little disturbing to the remaining band members.

Solution:  A Written Partnership Agreement

Obviously, you can own and use a band name trademark as a common law partnership – most bands never even consider the issue, and as a result that’s how they own and use their names.  You can even register the name as a trademark, listing the common law partnership as the entity that owns the mark.  But absent a written partnership agreement to govern ownership of the name in the event a band member/partner leaves or the partnership dissolves (i.e., the band breaks up), figuring out who owns the rights in the name could get very messy. 

Obviously, in the case of most music groups, a written partnership agreement is preferable to general partnership law.  Once a band partnership agreement is created, it can function like a prenuptial agreement and, if need be, help make the break-up process less painful. 

Other Alternatives: LLC or Corporation

It’s also possible to form a limited liability company (also known as an LLC) or a corporation for the band.  These more formal forms of organization may work better for your band, depending on the sophistication of the band’s operations. 

In either event, it’s a good idea to work with an attorney who knows the ins and outs of each form of organization, as it relates to music groups.  As with many areas, spending a little money now on legal assistance may avoid much greater costs and headaches later.

PICTURE COURTESY OF PUBLICDOMAINPICTURES.NET.

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Gwen Stefani isn't going to screw up and step on someone's toes in the rag trade. You, on the other hand, might.

In the preceding post in this series, I mentioned some reasons why it’s a good idea to hire an attorney with experience in trademark law to handle the application to register your band name.  There are other reasons why hiring an attorney for this process is a good idea, though.  For instance, your attorney will have the experience to know whether existing trademarks covering peripheral “merch” goods categories are problematic.

What do I mean by that?  Well, when you put your band name/trademark on goods like clothing, you are wading into an industry not directly related to music or entertainment.  The apparel industry has its own brands and, unless you’re Gwen Stefani, as a musician you may be unaware of another identical or highly similar brand name in that industry. 

Music and fashion tend to track similar trends, attitudes and tastes, however.  Both emphasize youth, rebellion and counterculture style.  This makes it understandable that similar or identical names might arise in both the music and fashion industries.  So, as an example, it would’t be surprising for a band named “RAGE OF ANGELS” to bump into an existing clothing brand also called “RAGE OF ANGELS.”

Is this a problem?  Well, if the brands are identical as in the above example, and if you hope to use and register your band name for clothing, the answer is almost certainly yes.  That’s a relatively easy call for anyone to make.  But what if the names are not identical but merely similar to a greater or lesser extent?  Now it becomes a judgment call.  And this is by far the more common occurrence, by the way.

This is no small issue.  Many bands rely heavily on the money they make from sales of “merch” goods, and tee shirts and other clothing items form a dominant part of those sales.  All the more reason to have an experienced attorney search the name for these goods at the outset, in order to avoid these problems.

An attorney with experience in trademark law is better equipped to make that judgment call.  It probably would be more than worth the cost of a bit of attorney’s time to avoid wasting $275 – $325 in filing fees (for a clothing category), not to mention whatever problems and costs may come with a challenge or opposition by the clothing brand.

You want to focus on rockin’ the joint up, not on cease and desist letters from fashionistas.  Save yourself the headaches and work with an attorney who knows how to spot a potential issue in this arena and can help you avoid problems.

PHOTO COURTESY OF FLICKR USER BRAYAN E., UNDER THIS CREATIVE COMMONS LICENSE.

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The first post in this series discussed issues related to finding a band name that is available for your use.  Now we can talk about protecting your band’s name against encroachment by other acts.

So now you’ve found a band name that everyone in and out of the band loves, and it has passed the availability searching test I discussed in the previous post.  How do you create and strengthen your rights in the name, so no one else takes it? 

Rehearsing is great guys, but maybe you should take five and get started on that trademark application for THE EEL RIVER BOYZ.

First, you use the name.  You use it in the band’s promotion and performance.  You create the same types of sites you were searching for earlier, using the band name prominently on your website, on a Facebook page, a Myspace page, and so on.

Next, you register your band name.  You register it as a domain name; you register it on the band name databases; you set up a presence on Sonicbids.  And, most importantly, you register your band name as a trademark and service mark for the goods and services you sell under the name.

Trademark Registration

Before starting down the path towards registration of your band name as a trademark, it’s important to understand that trademarks are not registered for all possible goods and services.  Instead, your trademark wil be registered to cover the specific goods and/or services you identify in your application.

So what do you sell, as a band?  Live entertainment services?  Recorded music?  What about the “merch” you’ll sell bearing the band’s name – shirts, hats, posters, stickers, buttons, jewelry, key chains, shot glasses/beer glasses/coffee mugs?  All of the above?  Depending on your budget, you’ll want to cover as many of these goods and services as possible in your trademark application. 

Coverage for Your Application Means USPTO Filing Fees

I mention your budget because the U.S. Patent and Trademark Office charges filing fees when you file a trademark application.  Those USPTO filing fees are based on how many International Classes of goods and services your claimed goods and services fall into.  The International Classification system categorizes all conceivable goods and services into 45 separate Classes – a very general breakout of what falls within each Class can be found HERE.

USPTO filing fees vary depending upon how idiosyncratic your descriptions of the goods and services need to be.  If you are willing to use fairly generic pre-approved wording for the descriptions (and meet other requirements for your application), you can limit your filing fees to $275 for each International Class your goods and services fall into.  If for some reason accurately describing your goods or services requires more customized wording, the USPTO will charge $325 per Class in filing fees.

In my experience, for most bands the most important services to cover in a trademark application (in order of decreasing importance) are: 

Ÿ  Live entertainment services (which fall into International Class 41);

Ÿ  Recorded music in various formats (which falls into International Class 9); 

Ÿ  Clothing bearing the band’s name and/or logo (which falls into International Class 25); and

Ÿ  Printed goods such as posters, stickers and event programs (which fall into International Class 16).

As you can see, filing fees can add up quickly.  Covering just the above four Classes in your application will amount to $1,100 in filing fees charged by the USPTO.  This means that you’ll want to think carefully about what’s most important to cover in light of your band’s finances.  Perhaps your budget only allows for one or two Classes, in which case I would opt for the first one or two categories above. 

Do You Need an Attorney?

If you hire an attorney to file and prosecute your trademark application, that attorney also will charge separate professional fees for those services.  Why go to that expense, you may ask yourself.

Hiring an attorney who is experienced in the practice of trademark law is not an absolute necessity for the registration of your mark with the USPTO.  But an experienced practitioner knows how to prepare an application and deal with the USPTO examiner in a way that helps ensure that the resulting registration will give you with the broadest rights possible.  Is it worth the money?  You bet it is.

File Right Away

The USPTO will accept your application right away, you don’t need to begin using the band name before you file your application as long as you can assert that you have a bona fide intent to use the name.  In fact, it’s best to file sooner rather than later.  Every day that goes by is a day someone else could file an application that blocks your registration.

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All businesses have trademark issues that should be buttoned-down.  Family-owned businesses, though, tend to have more trademark issues – and potentially thornier ones – than many other types. 

Okay, MAYBE this family business can get by without addressing trademark issues, but YOURS CAN'T!

Long-standing and thriving family businesses can implode for many reasons when the patriarch or matriarch who started the business retires or dies.  Sometimes family members in succeeding generations lack the business skill or drive of the original generation.  Sometimes they disagree as to the best way to run or expand the business.  There are plenty of reasons for such businesses to run aground.

Trademark Issues are Different in Family Businesses

Often family members from one or more later generations have worked hard to develop and expand the business, and feel a sense of ownership.  Each member of each generation tends to develop the expectation that someday he or she will inherit ownership of at least some part of the business.  For these reasons, family businesses that fail to deal with succession planning in advance are even more likely to fail when succeeding generations take over. 

And what asset of a family business is more valuable than the trademark?  The trademark literally symbolizes all of the good will that each family member has worked to build for the business.  And making matters more sensitive, the primary trademark for many family businesses is the family name – something that all family members naturally feel entitled to use. 

Complicating things even further, it’s not unusual for different family members – brothers, sisters, uncles, aunts, cousins, and so on – to take over the independent management (even ownership) of different stores.  This is quite common in family restaurant businesses, for instance.

How Problems Arise

While the original generation is still in place, such arrangements usually can hang together.  But when that original generation leaves the business the succeeding generations can end up pulling the business to pieces, and the disputes often boil down to who owns and controls the right to use of the trademark.

I am aware of one family restaurant business where the business was started by a group of five brothers.  Eventually, the brothers opened up their own separate restaurants using the same name.  Later, some of their children opened up restaurants of their own, using variations on the name.  After many years had passed, a potential dispute arose over who controlled rights in the name.  Obviously, such a twisted skein of interlocking rights would be a nightmare to unravel.

I should point out also that trademark disputes in a family business not only can hobble or completely cripple the business, they also can make the business unsalable.  No purchaser wants to buy a business where the right to use and control the business’s primary brand name is in question.

Another problem that can arise where multiple family members claim rights in a family business trademark:  it is unclear who, if anyone, can enforce the trademark against an ouside infringer.  Where more than one party claims rights in the same trademark, the ability for one of those parties to enforce the mark is greatly compromised.

Solutions for Family Businesses

For all of these reasons, it should be obvious that trademark ownership is one of the succession planning details a family business absolutely must attend to, if family members want to ensure long-term survival of the business across generations.  How is this accomplished?

Ÿ  To begin with, the business’s trademark should be registered if possible.  I say “if possible” because family names are regarded by the law as a form of descriptive mark, and as a result they are inherently difficult to register as trademarks.

Ÿ  It is preferable that, if at all possible, the entity that owns the trademark registration should be a corporation or LLC – a formal legal entity in which the rights can be vested.  The governing documents for that entity should specify very carefully how ownership and control of the trademark will be handled when one shareholder or member dies or retires. 

Ÿ  In my opinion partnerships are less desirable for the purpose of trademark ownership (especially common law partnerships with no partnership agreement in place) because often partners hold an equal share in all partnership assets – that doesn’t solve the “who controls the name” problem, does it?  Whatever the entity, however, trademark ownership and succession should be specifically set forth, in writing and in a form that is binding upon all involved.

Ÿ  Further, starting as early as possible in the life of the family business, great care should be taken that all uses of the trademark by any “branch” locations or businesses are controlled through a written trademark license. 

Ÿ  These measures should be handled (or at least overseen) by an attorney skilled in the practice of trademark law.  Each member of the family business should have separate counsel looking after his or her interests, to avoid any potential conflicts of interest.

Family businesses face enough challenges in generational succession, there is no reason to create more problems by ignoring important issues like trademark ownership.  These precautions won’t guarantee that no issues will arise when a family business changes hands, but they certainly will help to minimize that risk.

PHOTO COURTESY OF FLICKR USER HANSOL, UNDER THIS CREATIVE COMMONS LICENSE.

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Choosing a new brand name is not as simple as “Do I like it? Okay, let’s go with it!”  Whether it is to be your flagship brand or just a new product or service in your line, there are many factors to consider in choosing a new brand name.  In this post and the others in this series, I walk you through the most important of those steps.

My earlier posts in this series discussed the importance of getting good legal advice, of understanding the function of trademarks, and of deciding whether your marketing plans require exclusivity on the name.   I also have discussed the strategic value of coming up with a list of potential name candidates and of having your name candidates consumer tested and searched for potential conflicts.

My more recent posts discussed the value of filing trademark applications and registering appropriate domain names to reserve your narrowed list of name candidates.  The most recent installment discussed two steps: brand rollout and monitoring the marketplace for infringements.

We now come to the final step on my list: maintaining your trademark and domain name registrations, so that they do not expire or get cancelled. 

Failing to plan ahead for renewals is asking for disaster.

Step 11:  Maintain and Renew Registrations For Your Name

If you have gone to the cost and effort to stake out trademark and domain name registrations for your brand name, it only makes sense that you will want to keep them in place.  These registrations provide you with important safeguards against encroachment by competitors.  You should make concrete plans now, at the time of brand rollout, to take the necessary maintenance steps. 

Trademark Renewal

Unlike some other types of intellectual property protection, trademark rights can last forever provided you make continuous use of your marks and enforce them against infringers.  Trademark registrations also can be perpetual, but you must take the necessary steps to keep those registrations in force.

If you want to keep your U.S. Trademark Registration alive, you must make periodic filings with the USPTO to prove that the mark in question is still in use (and still used in the same form as it was registered.)  If you don’t make these filings, depending on the point in your registration’s life, it will be cancelled automatically or simply expire.  Your trademark practitioner can assist you in making the necessary filings on a timely basis, but ultimately it’s up to you to make certain the mark remains in ongoing use and that the registration is maintained.

Cancellation or expiration of your trademark registration doesn’t mean you lose all rights in your mark.  If the mark has been in continuous use on your product and remains in use, you still will have common law rights.  But the protections you can leverage using common law rights are far inferior to those provided by a U.S. Trademark Registration.  If the U.S. Registration for your mark expires or is cancelled, my best advice is to file a new application to register the mark as soon as possible. 

Domain Name Renewal

As with trademarks, domain name registrations cover a fixed period of time and will eventually “die” if you fail to renew them.  (One important difference is that with domain names, you can determine the length of your registration and pay registration fees accordingly; with trademarks the maintenance and renewal periods are fixed and uniform.)

If you build your brand into a valuable commodity, then the corresponding domain name will be an equally valuable piece of property.  You can bet there will be opportunistic parties waiting around for you to fall asleep at the switch and let your valuable domain registration die.  Indeed, there is an entire industry built around “snatching” expired domain names. 

SOMEBODY needs to keep their eye on the ball.

Make certain SOMEBODY in your organization stays alert to upcoming renewal and maintenance deadlines.

Your Assets, Your Responsibility

You should create within your brand organization a job function responsible for calendaring, tracking and renewing trademark and domain name registrations.  Because these events often take place years in the future, this responsibility should be bestowed on a particular job title, not a particular person.  Individual people may come and go, but job titles (and their responsibilities) remain.

You can in many cases outsource these responsibilities, but I recommend keeping your own calendar of upcoming renewals as well.  Bear in mind that if someone else fails to take the necessary actions, you are the one who will feel the loss of rights.  Any law suit you could bring against your failed “watchman” would be small comfort – money damages are a poor substitute for the value of your lost rights.  Ultimately, these are your assets and you should assume ultimate responsibility for keeping them safely registered.

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Choosing a new brand name is not as simple as “Do I like it? Okay, let’s go with it!”  Whether it is to be your flagship brand or just a new product or service in your line, there are many factors to consider in choosing a new brand name.  In this post and the others in this series, I walk you through the most important of those steps.

My earlier posts in this series discussed the importance of getting good legal advice, of understanding the function of trademarks, and of deciding whether your marketing plans require exclusivity on the name.   I also have discussed the strategic value of coming up with a list of potential name candidates and of having your name candidates consumer tested and searched for potential conflicts.

The next step is an important one, because it helps to reserve your narrowed list of candidates for your use once a decision is made.

Be prepared... file early with the feds.

Step 7:  File Trademark Applications to Protect Your New Brand

Filing one or more trademark applications to protect your new brand is an important part of the process.  You can use a mark and even develop limited rights in it on an unregistered basis, of course.  But the breadth of your rights, and your ability to enforce those rights, increase greatly when your mark is registered with the U.S. Patent and Trademark Office.  (State trademark registrations, while cheaper, usually offer little or no actual protection and thus I usually do not recommend them.)

If you have a logo version of your mark, you should strongly consider filing applications to register both the “word” version and the “logo” version.  Registering only the logo version will only cover the brand when used in that specific (basically, that identical) logo version.  We all know that logos have a way of changing over time, and you run the risk that eventually your registration no longer will cover the “evolved” logo.  The “word” registration will cover your mark in any format, including in any graphic logo format.  By registering the word format also you ensure that you will have consistent coverage of the brand, even if you eventually need to register a new logo version.

ITU Applications Let You File Early

You can file applications to register your new brand on a so-called “intent-to-use” basis, which I compare to taking a number for service at the deli counter.  Such “ITU” applications can be filed as long as you have a bona fide intent to use the mark. 

By filing an ITU application, your priority is locked-in so that your rights will be superior to those of others who may file or even begin use after you.  You will need to begin actual use of the mark before the actual trademark registration can issue, but an ITU application lets you get your foot in the door, as it were.

File For Several Candidates, Just in Case

It’s not unusual for a company to file applications covering several of potential name candidates relatively early in the name selection process, and then let the applications for the “losing” candidates go abandoned once a final selection is made.  This allows the applicant to get the earliest possible priority date by filing the applications early, and still hedge its bets on the final choice.  Generally the “bona fide intent to use” requirement is regarded as satisfied if the applicant has a demonstrable intent to use the mark as one of a relatively limited number of alternatives.

Registering your trademark with the USPTO effectively “reserves” the entire country for you to expand your use, even if you haven’t yet reached national distribution.  Registered marks also appear more prominently in availability searches conducted by other attorneys, so your registration will serve as a strong discouragement to others adopting confusingly similar marks.  Owning a registration for your mark usually makes it easier to litigate and to prevail against an infringer, should a challenge become necessary.

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Choosing a new brand name is not as simple as “Do I like it? Okay, let’s go with it!”  Whether it is to be your flagship brand or just a new product or service in your line, there are many factors to consider in choosing a new brand name.  In this post and the others in this series, I am walking you through the most important of those factors.

In my earlier posts in this series, I discussed the importance of getting good legal advice, of understanding the function of trademarks, and of deciding whether your marketing plans require exclusivity on the name.   The next step is less conceptual and more practical in nature: 

"I only chose ONE name candidate!"

Step 4:  Choose Several Potential Trademarks That Fit Your Branding and Marketing Objectives

Once you have sorted out the previous steps, you can use the conclusions you’ve draw to begin selecting potential brand names that fit your branding and marketing objectives.  This is the fun part! 

It’s best to choose a list of several names that would be acceptable, and try to avoid becoming too attached to any one name.  It is a good idea to rank the names in terms of your preference, however.

Why is choosing several candidates a good idea?  Simply put, it can save you time and heartache in the brand clearance process.

You should be planning to subject your brand name candidate(s) to a number of evaluations.  For instance, you may want to test your proposed brand with consumers.  If you plan to market internationally, you may want to get international reaction to the brand.  If nothing else, you absolutely should have your brand name searched by experienced attorney, to make certain it is available for your use and (hopefully) registrable with the U.S. Patent and Trademark Office. 

A brand name candidate may drop out of contention for a number of reasons.  A name may turn out to be unavailable, it may be unregistrable, may not play well with consumers, or may even have an unintended significance as regards your product or service.  (I once saw a name candidate for a major international brand get far, far down the approval process before someone realized that in the UK, the word was a slang term for what our British friends might call “an unsavoury sexual practice.”)

Obviously, this evaluation and searching process takes time – something that often comes into short supply as you move down the path towards your brand launch.  If you tie yourself to only one name, you may find it unavailable and have to start over from the beginning.  If you have chosen several candidates and run your evaluation tracks simultaneously, you are much more likely to end up with a viable candidate and take the shortest amount of time to do so.

If you have ranked your candidates in order of preference, your trademark counsel can run preliminary “knock-out” searches on them all in that order.  That way, if the preliminary search turns up an obvious block to any of the names you can discard that candidate without wasting the cost and time for the other evaluations.

I also mentioned emotional investment above.  If you choose only one candidate and become too attached to it, you may be inclined to ignore poor evaluation results and plunge forward with the name despite all the problems it may bring down upon you.  Making a list of possible candidates makes that occurrence far less likely.

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Choosing a new brand name is not as simple as “Do I like it? Okay, let’s go with it!”  Whether it is to be your flagship brand or just a new product or service in your line, there are many factors to consider in choosing a new brand name.  In this post and the others in this series, I’ll walk you through the most important of those steps.

Is it important that you stand out from the crowd?

In earlier posts in this series, I discussed the importance of getting good legal advice and of understanding the function of trademarks.   The next step follows logically enough (I hope) on those building blocks:

Step 3:  Think About How Important Exclusivity and Protectability Are To Your Marketing Plans

All trademarks are not created equal.  Some are easily protectable, and thus offer their owners a high level of exclusivity.  Others can be difficult or impossible to protect, offering virtually no exclusivity. 

The more distinctive your mark is – that is, the more effectively it performs the source-identifying function of a trademark – the more protectable it is likely to be.  For this reason, you should think carefully about how important exclusivity and protectability are to your plans for marketing your new product or service.

Certain kinds of trademarks are inherently more distinctive than others.  Marks that simply describe your goods or services are notoriously difficult to register and/or protect, and can even be difficult to clear with a strong legal opinion.  On the other hand, such descriptive marks may have a practical marketing value for your specific product that “trumps” the need for exclusive use of the name.  Again, an experienced trademark practitioner can help you sort through these issues and select a mark that fits your needs.

So ask yourself at the outset:  Is it important to my planned marketing position that I have a highly protectable brand name, one around which I can draw a large “ring of protection”?  Or, is it more important that my new name be descriptive of the product, even if it means competitors can closely duplicate my name?  The answers to these questions will be important (and not just from a trademark perspective) as you move forward towards your product launch.

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As many readers may know, a trademark need not be a name or a logo.  A trademark can be almost any element that identifies your goods and distinguishes them from your competitors’ goods.  Even the shape of the product itself, or the shape of some specific component or element of the product, can serve as a trademark provided the configuration of that feature is not functional in some way.

The GIBSON LES PAUL guitar - one of the most recognized, and most copied, guitars in the world.

The GIBSON LES PAUL guitar - one of the most recognized, and most copied, guitars in the world.

The musical instrument industry, being as competitive as any other, has taken advantage of this fact by registering “configuration” trademarks.  As a musician and compulsive guitar freak aficionado myself, I thought it might be interesting to examine the way that guitar trademarks have helped to shape the industry.

Of course, traditional “brand name” trademark disputes have played their own role in the development of the guitar industry.  Indeed, Fender Guitars’ iconic TELECASTER guitar – the original solid-body electric guitar and the signature axe of rockers like Keith Richards, Bruce Springsteen and Joe Strummer – was originally called the BROADCASTER.  Soon after the guitar’s introduction Fender received a cease-and-desist letter from the good people at Gretsch, who used BROADKASTER as a trademark for drums.

Fender quickly switched over to the TELECASTER mark, after a transition period in which it sold a small number of guitars with the BROADCASTER sticker removed and thus no name sticker on the headstock.  Because of their extreme rarity the Fender BROADCASTER guitars, along with the nameless guitars (dubbed “No-Casters” by guitar buffs), command a huge premium in the vintage guitar market.

Copy Guitars – Where the Action Is

In fact, however, infringements of actual trademark names are relatively rare in the guitar industry.  No one is selling CIBSON or VENDER guitars, to my knowledge.  The real action, and the most interest, lies with the issue of so-called “copy” guitars. 

The FENDER STRATOCASTER - another iconic model, also widely copied.

Some background:  Guitarists are nothing if not reverent of the past, and thus there are a limited number of iconic guitar designs.  Most of these date from the 1950s, the dawn of the electric guitar era.  Gibson’s LES PAUL, SG and ES-335 models, Fender’s TELECASTER and STRATOCASTER guitars, various RICKENBACKER brand guitars – these are among the few truly iconic guitar models.  In recent decades, PAUL REED SMITH guitars, named after the company’s founder, have joined those elite ranks. 

Almost from the beginning Gibson and Fender, makers of most of the legendary models, chose not to challenge copy guitars unless the copy was virtually identical to the original. By the term copy guitars, I mean lower-cost (often much lower-cost, and usually foreign-made) copies of the “big name” guitar models.

Even beginning guitarists want to look (if not, unfortunately, play) like their guitar heroes.  Therefore, most beginners want an axe that closely resembles one of the celebrated big-league guitar models mentioned above.  As a result, each copy manufacturer tries to get as close in appearance to those famous axes as possible, without provoking an infringement challenge.

The RICKENBACKER 12-string: Kerrrrrraannngggg! It's been a hard day's night...

Some companies, such as Ibanez, started out as copyists before succumbing to infringement threats and developing their own models.  Many now would rank some IBANEZ models as iconic guitars, subject to copyists of their own.

Personally I am a fan of the higher-quality copy guitars, of which there are many.  In my humble opinion there’s nothing in my hacker’s technique that requires a multi-thousand dollar guitar, especially when I can get 80% of the instrument for 10% of the price.

Who Protects What?

Many of the elite guitar manufacturers have sought protection against the most slavish copyists by registering the appearance or configuration of their guitars.  More specifically, they have sought protection for certain specific elements of the guitars.

In recent years, with growing awareness of the competitive advantages of trademark registration, the guitar companies have increased the number of elements they register as trademarks.  Generally speaking, the top-shelf companies have sought protection for guitar body and headstock shapes.  It can generally be said that each manufacturer seems to have drawn a line in the sand and focused upon preventing the reproduction of one or two particular features of its flagship models:

Gibson energetically enforces its rights in the "open book" design at the top of its guitar headstocks.

Ÿ  Gibson jealously protects the “open book” shape at the top of its headstocks, as well as the particular shape of the cutaways on its legendary LES PAUL and SG models.  (Cutaways are the body indents on one or both sides of the neck, which allow a player easier access to the highest frets when soloing.)

Ÿ  Fender protects headstock shapes, and especially those of the iconic STRATOCASTER and TELECASTER models.  The company recently attempted to reverse the course of history and seek registration protection for its STRAT and TELE body designs.  Fender failed in that attempt when a large number of other guitar makers opposed the applications.  The gist of the other makers’ argument was that Fender had allowed decades of widespread copying of those body designs, and as a result the configurations did not distinguish Fender’s guitars from any of the countless copies.  See the allegations in one of the oppositions here.

If your guitar's headstock looks like this, it'd better be a real FENDER STRATOCASTER.

Ÿ  Paul Reed Smith chooses to protect its headstock, its signature “birds in flight” fretboard inlays, and the beveled edge of its cutaway (see more below.)

Ÿ  Rickenbacker, whose legendary guitars were widely used by the Beatles and the Byrds, is one of the few guitar makers that has protected both body shapes and headstock shapes for decades.  Rickenbacker also traditionally has been far more energetic in pursuing copyists than its peers, with the result that there are very few Rickenbacker copies to be found.

My “Lawsuit” Guitar Is Worth An Extra Hundred Bucks!

At certain points in the past (especially the 1970s), the major guitar companies have responded to particularly exact copy guitars by threatening or actually bringing trademark infringement suits.  The belief has arisen, whether true or not, that the major guitar companies were spurred into action by the equal or greater quality of the foreign copy guitars, and the resulting loss of market share for their much costlier products. 

The distinctive PAUL REED SMITH headstock.

I suspect that very few lawsuits actually were filed, but doubtless some cease and desist letters were sent.  Nevertheless, the phrase “lawsuit guitar” is bandied about quite freely by those selling used guitars on eBay and elsewhere, to lend a certain cachet and to seek a little extra in price.

Big v. Big

Notwithstanding the foregoing, it’s not always the big guys going after the little-guy copyists.  Occasionally, the battle is Big v. Big.  In 2001, Gibson sued Paul Reed Smith Guitars, alleging that PRS’ “Singlecut” model infringed Gibson’s rights in the configuration of its LES PAUL guitar.  In my own opinion, the Singlecut looked no more like a Gibson LES PAUL than countless other copy guitars.  Nevertheless, Gibson prevailed at the trial court level and for a time PRS was forced to stop making the Singlecut model. 

Gibson saw its judgment overturned by the 6th Circuit Court of Appeals, however.  The appellate court emphasized Gibson’s courtroom concession that “only an idiot” would confuse the two models at the point of sale.  PRS immediately resumed marketing the Singlecut model.  It may come as no surprise that guitar buffs, ever sensitive to tiny nuances of relative prestige, have come to distinguish the original “pre-lawsuit” Singlecuts from those that came later.

PHOTOS COURTESY OF FLICKR USERS MRBILL (STRATOCASTER headstock and guitar), BGVJPE (Gibson and PAUL REED SMITH headstocks), ETHAN PRATER (LES PAUL headstock) and BANJO D (RICKENBACKER guitar), ALL UNDER THIS CREATIVE COMMONS LICENSE.

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