Building and Protecting a Brand - The Legal Side

In 2017, two significant US trademark registration cases were decided against the United States government and in favor of the people.  However, for most companies looking to build and protect brands, these cases, while legally significant, may have very little impact.

U. S. trademark law as set forth in the Lanham Act of 1946, generally prohibits the registration of trademarks that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”

In the recent Supreme Court decision in the USPTO v Tam, the court found that the prohibition of disparaging trademarks violates the First Amendment’s Free Speech Clause, stating that “speech may not be banned on the ground that it expresses ideas that offend.”

Following in the footsteps of the Supreme Court in Tam, the Federal Circuit appellate court in the case of In Re: Erik Brunetti found that the trademark act’s “bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech.”

These rulings are clear victories for free speech and the rights of people to engage in speech and commerce without government intervention, but it does beg the question:

What do these cases mean for business?

The answer to that question probably lies in the purpose of trademark, which is to identify the source of the goods or services being sold in commerce.  In other words, trademarks are about branding and marketing.

Trademark protection is one of the best and most cost-effective ways for companies to protect their investment in their brand.  When a company builds a brand to point where customers seek out their goods and services, it is at that point that the company can charge a premium based on the reputation of the brand and company profits increase.  If you are reading this article on your iPhone or other Apple device, you using a great example of a brand that commands a premium and a company that protects its brand.

Companies have always been free to adopt disparaging, immoral, and/or scandalous brands for their products and services, but, for the most part, companies have refrained from selecting such brands.  Was that decision due to lack of trademark protection?  Possibly.  Perhaps a better explanation for the general lack of disparaging, immoral, and/or scandalous branding is companies did not find such branding to be in the best business interest of the company.

What types of trademarks should companies adopt for building their brand?

  1. Distinctive - trademarks should distinguish your brand from your competitors and from goods and services in related markets.  If you mark is too similar, you may not be able to distinguish your company and may face a trademark infringement dispute.
  2. Non-descriptive - trademarks should be suggestive at the most, but the strongest trademarks are often arbitrary and fanciful, e.g., Apple, Google, Verizon, Amazon, etc.  Merely descriptive or generic trademarks, e.g., Main Street Merchant, Cookie Store, etc. may not be protectable at all and efforts to build a brand may not be productive.
  3. Appealing - trademarks should be a part of your overall marketing strategy and serve to build the image of your company and brand in the marketplace and attract customers to your products and services.

While there are many factors that drive overall marketing and branding decisions and investment, making sure that your brand is protectable and then protecting your brand will help to ensure that your company gets the best return on its marketing investment.

Michael C. Antone, a Registered US Patent Attorney, serves as Of Counsel at Davis Agnor Rapaport & Skalny and represents clients in the area of intellectual property and corporate law.