THE BRAND LAWYER
The Business and Law of Brands and Branding from Steven Weinberg of Holmes Weinberg. PC
BRANDS AND TRADEMARKS: WHAT’S THE DIFFERENCE?
I’ve always been fascinated by the disconnect experienced by so many branding professionals and legal professionals over the term “trademark.” Many branders and marketers believe that trademark is a verb, as in “can you trademark ….” Many legal professionals believe that a brand is no different than a strictly legal thing. So here’s some clarity: a trademark is a noun. It is the legal term for what most people think of as a brand. It can be a word, a design, a combination of a word and design, a slogan, a scent (really!), a sound, a color, a combination of colors and designs and words, and just about anything that is used to identify and distinguish a product or a service from those of others. The most elegant statement of what a trademark is and its value, in my opinion, was stated by Justice Frankfurter or the Supreme Court in a 1942 case involving a red circle on the bottom of a shoe:
“The protection of trademarks is the law’s recognition of the psychological function of symbols. If it is true that we live by symbols, it is no less true that we purchase goods by them. A trademark is a merchandising shortcut which induces a purchaser to select what he wants, or what he has been led to believe he wants. The owner of a mark exploits this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. Whatever the means employed, the aim is the same — to convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears. Once this is attained, the trademark owner has something of value. If another poaches upon the commercial magnetism of the symbol he has created, the owner can obtain legal redress.”
Commercial magnetism. The drawing power of a congenial symbol. A merchandising shortcut. These phrases cut to the chase of what every brander and marketer knows: A brand is a symbol, a shortcut, representing all of the imagery, context, messaging, communication, emotions, need fulfillment, and loyalty that the brand wants to represent and be known by. In the dense fog of a crowded, undefined, constantly shifting marketplace, a brand is the light of the lighthouse and the clear path to the safety it is meant to represent. A safe harbor for consumers. A brand is all of these things, and to that extent is broader than the legal trademark, which is the actual word or other symbol that embodies all of these sensations and emotions and memories, etc.
The easiest way to differentiate a brand from a trademark is to think of the trademark as the legal representation of the brand. It is this legal representation that is protected by trademark law. It usually consists of a name (sometimes called the “brand name”), such as APPLE, and often a logo such as 
and often a combination of the word and a logo, and sometimes a slogan too. A brand is more extensive than this. It consists of all of the divergent elements that make-up the commercial magnetism of the brand — customer service, the architecture of the stores, its advertising and promotion, online presence, financial reputation, its leadership, its coolness or lack of cool, music and images associated with the brand, quality of its products and services, consumer likes and dislikes, its relevance, its integrity (or lack thereof) and so on. The trademark is a “merchandising shortcut” for all of these elements. And all or many of these elements is what a consumer experiences when she or he sees the name or the logo. A trademark is considered to be a symbol of a brand’s reputation, reputation being the end result of how a consumer who has experienced the many elements of a brand thinks about a brand. Trademark law protects that reputation, good or bad.
A trademark, the legal noun, unlike a brand, can be registered, which is what most branders and marketers are thinking when they ask if a name or symbol can be “trademarked.”
The actual law of trademarks is quite complex and varies from country to country. I’ve been a trademark lawyer for 30 years, and find that there’s always something new to learn about and apply. But here are some basics that will help you safely being to navigate through this legal fog:
1. You can develop legal rights in a trademark just by using it in a way that people understand to be a trademark use. Registration is not mandatory for protection in the U.S. But registration is the best way to get national protection and to prevent others from getting those rights before you. A very good primer about trademark registration in the U.S. is on the website for the U.S. Patent and Trademark Office at http://www.uspto.gov/trademarks/basics/BasicFacts.pdf.
2. Just about every country has its own trademark law, and in most countries outside of the U.S., unless the trademark is registered, it’s not protected. And in most countries, anyone can register a trademark whether or not they have any intention of using it. So before you decide to do business with a licensee, distributor, co-marketer or partner, outside the U.S., file an application for the trademark in that person’s country. If you don’t, they might, and they don’t have to give it back.
3. Trademark law in the U.S. protects against the use of a similar — not identical — trademark for commercially related products or services. And similarity can be similarity not just in visual appearance, but in sound or meaning. For example, in one case, representing PLAY DOH, I was able to prevent FUN DOUGH from being registered for a competitive product because to a child “fun” and “play” are similar in meaning. And really well known trademarks get more protection than others, which helped in this case because PLAY DOH was so well known. There are lots of examples of this. GALLO wines was able to stop a playing card company from marketing GALLO playing cards, and we recently stopped a company from using EL GALLO for an energy drink. For AMERICAN IDOL, we have stopped lots of people from using names containing the word IDOL for a wide assortment of products and services. What this means is that searching the Patent and Trademark Office trademark database for identical names is not enough to clear the use of a new trademark.
4. Owning a domain name does not mean that you have acquired trademark rights in a brand name incorporating the domain name. In other words, owning ABC.com doesn’t give you trademark rights of any kind in ABC.
5. Getting state approval to use a name as a corporate name or fictitious name does not give you any trademark rights in the name. For example, a company in Denver years ago got permission from the Colorado Secretary of State to use the name Haircrafters for its business, but we were able to stop it from using the name because our client owned a federal registration of Haircrafters that predated the Colorado state approval.
6. The only way to have a high degree of confidence that you can use a name as trademark/brand name in the U.S. is to obtain a full trademark clearance search. The same is true in most countries. There are professional trademark search companies that can be hired to do these searches.
7. Made up names (XEROX) and names that have no relationship to the product or service they identify (APPLE for computers; GOOGLE for a search engine) get the broadest protection under trademark law. Names that are descriptive of a quality or characteristic of a product or service are very difficult to protect. Generic names get no protection.
8. Having rights in a trademark doesn’t mean you have rights for every kind of product or service. APPLE for computers and APPLE MUSIC for a music label/publisher have different owners. Same for DELTA faucets and DELTA airlines, ROLLING STONES rock group and ROLLING STONE magazine, etc. As a general rule, rights in a trademark extend to those products and services that are commercially related and the rights may be broader or narrower depending upon the type of mark. For example, celebrity and designer names, which can be used for all kinds of products and services, and famous brand names, like GOOGLE and IDOL have more extensive rights than non-celebrity, non-famous brands. So the better known you can make your brand known, the stronger the trademark rights.
9. Trademarks are not copyrights and are not patents. They all fall under the general heading of “intellectual property,” but they are very different.
As the blogging continues, I’ll delve deeper into the interplay of brands and the laws. Feel free to post questions. I can’t give legal advice on a blog (there has to be an attorney-client relationship for me to give legal advice), but I can provide some general guidance.
Happy Halloween.
BRANDS, CONSUMERS AND TWITTER: WHAT TWEETING BRANDS NEED TO KNOW
Twitter and Isobar UK have published a new research study that examines “unconscious cues” that drive brand perception on Twitter. Given the growing importance of Twitter to brand marketers, this study needs to be read by all brand marketers. The study created fictional brands to test factors that matter when consumers look at your brand on Twitter, things such as the size of the brand’s community, the voice of the brand, how it promotes, the number of followers, the number of tweets it sends out, etc. As it turns out, these unconscious cues are important: some of them have a real impact on how consumers perceive and react to a brand. And that’s to be expected — the more a brand tries to be persona having interactive communications with real people in real time, i.e., the more it acts like it’s a person, the more likely will it be reacted to as a person. So just like unconscious cues play a significant role in interpersonal communications between real people, so they play such a role in interpersonal communications with the persona/voice of a brand and real consumers. So what are some of the UC’s that make a difference. According to the study results, (1) the more followers a brand has the more it is trusted (think “celebrity” and “popularity”– my words), (2) tone is really important; when it comes to brand bios, “funny” increases likeability while “serious” increases trust (so try to be seriously funny?), but likeability doesn’t mean that consumers are more likely to buy the brand or not. And the age of the consumer also plays a role. Not unexpectedly the older the user, the less likely to purchase because of tweets. Interestingly, but again not surprisingly, overall promoted tweets scored higher than organics. The full study is available here: http://usblog.isobar.com/wp-content/uploads/2014/10/Isobar-Twitter-White-Paper.pdf
THE ROLE OF SOCIAL MEDIA IN BRANDING
Brands are stories, and like all other stories, they have to be communicated. A story unheard is not a story. A story not understood is not a story. And clearly, a story not believed turns into something altogether different. The brand as a story has to be effectively communicated, understood in a positive way and believed. It has to be a story one wants to come back to, delight in and make part of one’s own story. Why else would you wear someone else’s name on your person?
Back in the pre-digital days, brand communication was pretty straightforward: one-way, non-interactive print, television and radio advertising along with event, television and radio sponsorship. The brand told us what its story was and we, as receivers of those communications, either bought into it, or not. There really was no direct way of communicating back to the brand, other than as measured by changes in sales and revenue of the branded product or service and the occasional (and rarely listened to — yes, I know there were exceptions) letters to the brand or to an editor. There was some media coverage of brands, but usually when a brand got into trouble or when a particular brand campaign broke new ground (like “Where’s the Beef?” for Wendy’s).
With the introduction of the Internet, a number of brands tried to make their websites cozy and welcoming places for their consumers to come and share recipes, indulge in product images, engage in various contests and the like, but the communication then was still pretty much one way — from the brand to the audience. Yes, there was some interactivity, but it was mostly negative and in the nature of brand critical websites with obscene domain names (f**kbrand.com) or deceptive domain names (the old bait and switch, like the “pro-life” group that used the URL plannedparenthood.com to criticize that organization), and critical and often nasty, but sometimes very nice postings on blogs, but the total audience for these were usually few.
Enter Facebook, Twitter, Tumblr, Pinterest, Amazon, Yelp, and the extraordinary growing number of other platforms that allow for real interactivity with large audience reach. Consumers are posting images that reflect their feelings toward a brand, are “liking” or otherwise commenting on brands, rating brands, sharing their experiences with brands, and, in essence, telling their stories about the story of the brand. The story is no longer from the brand to the consumer; it is now a mixture, except that the massively concentrated and distributed word of mouth that social media permits no longer gives the brand the final word on its story.
For many brands, this was and remains both exciting and terrifying. Loss of control is never pleasant. Change is always risky. Rethinking and readjusting the brand message constantly, and always being on the alert for what the consumer is saying powerfully somewhere, is challenging. And the consumer is so complex with so many different voices, from aging baby boomers who need to express themselves and their importance in waning time to Millennials, born with electronic digits, who view the online and offline worlds as one and don’t trust easily (but also can be fairly easily manipulated).
And then there are the strategy issues: so many places to target, so many media, so many channels, so much to do. And what’s the ROI? With studies showing that most videos embedded in social media aren’t being seen, and data proving that visits, clicks and “likes” don’t necessarily turn into sales (Facebook and others are re-thinking how they measure their effectiveness), many marketers feel challenged to support putting a lot of money into social media, but at the same time know that somehow they have to make it succeed and be an integral part of their brand story. And of course the lawyers and compliance professionals are constantly talking about the risks, real and imagined, of dealing in social media (which I’ll cover in another post).
So what to make of this? We need to always start and end with the basics — brand stories need to be communicated effectively, understood, believed and loved. Which means taking an integrated approach that results in these goals. Use of the media that consumers use to get information is a right place to be, as long as everything that’s offered up is consistent with and supports the overall brand story and the brand goals. In other words, like every relationship that works, there has to be mutual respect, effective communication and trust. Social media used effectively can create and sustain great relationships; used ineffectively, it can break them.
SOME THOUGHTS ABOUT THE BUSINESS AND LAW OF BRANDING
We communicate through storytelling. Everything we say and everything we perceive as reality moves instantly from the present into memory. How those memories are categorized, stored, recalled and perceived is in the context of the story in which we have placed them. All of us in our lives and livelihoods experience our place in the world through stories and storytelling. Context is pretty much everything. One of the first realities I experienced as a trial lawyer is that there is no truth, no reality about what actually occurred until the jury decides what happened based on the stories that each side presents. And every advertising and promotion professional I have ever known has been paid to create stories that move their targeted consumer one step closer to adopting as their own reality the product or service being sold. If it were otherwise, all an advertiser would ever have to say is “Here’s my product. Buy it.” That of course, would never happen.
A brand is a story. Not the story of the brand, but of the emotions, aspirations, need fulfillment, social status and other sense of being conveyed through images, music, context and story. Who I am, who I want to be, who I want others to think of me as — the story of “me,” all conveyed in my relationship to the brand. Because part of everyone’s story are the brands she or he uses or aspires to use. And every one of us in the world of branding wants to make sure that the brands we nurture and represent become part of the consumer’s story, and that predators of these brands are not permitted to hijack them or their story.
The battle for reality in the marketplace is no different than in the courtroom. Each competitive brand has its story about how that brand is the best or a better choice for the demographic’s sense of personal reality. And everything a brand communicates about itself has to have credibility and integrity. Or it won’t be believed. Same in the courtroom — facts told by one who is proven to be untrustworthy or not credible are not believed — they do not become part of the real story.
So as it turns out, the ultimate goals of the marketer and the lawyer are not really different. Both want the brand story to live long and prosper, and both want to make sure that competitors and counterfeiters don’t denigrate, make false statements about or abduct the brand. This relationship may not be kumbaya, but it’s certainly a shared and valued interest. And one worth keeping in mind. That’s my story, and I’m sticking to it.
ABOUT THIS BLOG
I am one of the lucky ones. From my first days as a lawyer 30 years ago, I was lucky enough to work with great brands like Sesame Street and the Muppets, Orville Redenbacher, Monopoly, Kraft Foods and Paul Masson. I since have worked with great brands like Apple, Microsoft, NBC, McDonald’s, Star Trek, Citibank, SONY, Quaker, Pepsi, Gatorade, American Greetings, Strawberry Shortcake, Colgate-Palmolive, Philip Morris brands, Budweiser, Jack Daniels Properties, Aunt Jemima, the Rolling Stones, Revlon, Estee Lauder, the SC Johnson brands, Paramount Pictures, and currently with some of the foregoing as well as such great brands (and the great people associated with those brands) including American Idol and America’s Got Talent (and all of the other FremantleMedia brands), the Gallo Winery and its many brands, and wonderful licensing talent including George Foreman, Hulk Hogan and Chuck Norris, courtesy of my extraordinary law partner Henry Holmes (the “Holmes” in our “Holmes Weinberg” law firm name – and Henry also has mentored my becoming an entertainment lawyer).
The work is and always has been exciting, challenging and fulfilling. It has included trademark, copyright and domain name strategies, acquisition, sale and enforcement, worldwide licensing strategies and deals, and sponsorships, endorsements, advertising and promotion in every media in most modern countries. I’ve worked with established brands, transitioning brands and brand new brands. And throughout this time I have been lucky enough to be married to Dana, who was a creative director at a major advertising agency and worked with a number of major brands. Great synergy there – she taught me branding from the advertising and promotion side and I taught her all about trademarks. This was especially fun when by happy coincidence we shared the same clients and were working on the same brands.
With my software technology and marketing background, I also was lucky enough to be one of the first Internet/domain name lawyers in the world, and, with thanks to my then pre-teen daughter and her friends (and a few far sighted clients), early to social media. I became professionally enamored with the digital world, and with my background as a mediator, executive coach, speaker, litigator and negotiator, I needed to know more about digital communication as it affects brands and consumers, and so I co-founded what has become a leading integrated marketing creative studio in New York City, Know Use Corporation (knowuse.com) which works with new and established brands in developing and executing on state of the art creative P&A strategies, including social media strategies.
I’ve shared this history with you because, hopefully, it provides some insight into my fascination with brands and their relationship with people. And why I have decided to start this blog. Those of you who know me know my love for talking about this subject – I was so flattered that the International Trademark Association decided to get out of its comfort zone and allowed me to develop and chair its first business and legal conference on Branding and Social Media in October 2013 and I’ll be moderating a panel about it at this year’s Licensing Expo in Las Vegas in June – will understand why I want to talk about it publicly more than once a year.
So getting back to the title of this section, this blog The Brand Lawyer is about my observations and thoughts on both the business and law surrounding brands and the communication between brands and their consumers. It’s meant to be read by anyone interested in this important subject matter. Others with my passion will have opportunities to post their thoughts and ideas here as well. And since this is a startup, there are endless possibilities for what it will become.
Thanks for joining me.
Steven Weinberg