How to trademark a brand: Strengthen your marketing with IP rights

Personality and aesthetic: crafting a public image

A brand identity is more than the goods and services it represents. It also comprises the emotions consumers associate with a business – both positive and negative – and the level of satisfaction ascribed to its commercial offerings. IP rights cannot cover this subjective response, but it can be cultivated by a comprehensive portfolio. In this regard, certain aspects of trade dress and packaging have their role to play in brand identification alongside trademark-ready assets.

Consider Dewar's White Label, one of the most well-known Scotch whiskies in the world. Specifically, consider its bottle.

• The name "Dewar's" is a registered trademark, as is the unique symbol that can be seen both atop the cap and embossed on the upper bottle.
• But other aspects of its presentation are not directly trademarked. These include the warrant of appointment as distiller to the British crown, conferred by the late Elizabeth II, the phrase "True Scotch" underneath the White Label name and the unique number printed on the label that "ensures traceability against forgery or imitation."

All of these design choices speak to the aesthetics and persona of the Dewar's brand, which emphasizes legacy, quality and adherence to company tradition. Taken together, such ornamental characteristics can identify a particular enterprise as the source of a product, and so this "trade dress" is considered under trademark law.

Even those functional elements that are excluded from trade dress protections contribute to creating and presenting a brand image. Visually appealing packaging can come down to juxtaposing the right color and font to make for a favorable impression. A simple feature that increases ease of use, like a convenient opening mechanism that closes firmly, can positively influence a consumer's perception of the product. The opposite is also true: Packaging that is ugly, slapdash, misleading, difficult to open or excessive has the potential to dissuade buyers and diminish public trust.

How to trademark a brand: the multifaceted process

So long as they do not infringe on existing marks, you can use unregistered trademarks to indicate your brand or specific goods (or services), applying the appropriate symbol (™) in the process. However, it should be stressed that unregistered marks carry little legal weight until they successfully pass through the process of trademark filing and registration.

When you do successfully register your trademarks and affix the ® symbol, you strengthen your ability to pursue legal action against unauthorized use of your IP assets. Thus, with such a valuable resource potentially on the table, you need to proceed methodically to guarantee the best chance of success.

Search carefully

Start the process by conducting a trademark search to make sure you would not be infringing on someone else's brand name or symbol. Do not limit this search to your domestic jurisdiction if your company does business in multiple countries. Even if you have been using the unregistered mark in commerce without receiving any pushback, it still pays to double-check. This is because shortly before being entered into an IP register, pending trademarks are published by the examining office to allow third parties to file oppositions.

Reflect on use

This brings us to another pivotal point. In some jurisdictions, establishing proof of a mark's prior or intended use in commerce is mandatory for registration. Even at offices where this is not a requirement, it is preferable to have at least some examples of the mark's use, if only to strengthen your claim. On the other hand, this becomes critical if you have been using a trademark that was previously ineligible due to being descriptive and now want to claim that it has acquired distinctiveness with the relevant public.

Draft and submit an application

If seeking to register enough IP assets to cover an entire brand, you may want to file multiple applications simultaneously or in quick succession. This is best done with the assistance of an experienced trademark attorney. Include all required details for each trademark:

• Description
• Supporting art or photographs
• Basis for filing (i.e., "use in commerce" vs. "intent to use," if applicable)
• Which goods and services the mark applies to (typically based on Nice Classification standards)
• Fee payments and any additional forms

Requirements vary considerably by jurisdiction, as do filing fees — yet more reasons why a trademark lawyer should aid you in this endeavor.

Once you have submitted your application(s), be patient while examiners process the paperwork. A large number of IP offices allow you to check application status in some way, usually online. If examiners contact you for information, respond promptly and, if appropriate, make any requested corrections to the application.

After your trademarks have been registered, you can extend their protection to as many as 130 countries using the Madrid System maintained by the World Intellectual Property Organization (WIPO). Keep in mind that while the Madrid System is widely honored, it will still be best to file separate domestic applications in each jurisdiction that is central to your brand.

When you register all your keystone trademarks, congratulations are in order: You now have a library of IP that can serve as the foundation and bulwark of your brand identity.

Ensure ongoing protection for brand trademarks

Your new trademark portfolio can last indefinitely if you maintain it appropriately. Generally speaking, renewals take place at 10-year intervals in many jurisdictions. That being so, certain obligations can appear before then. Although you can register a European Union Trademark (EUTM) without the mark being in circulation, you will need to furnish proof that you have used the mark in commerce (or attempted to do so) within a five-year period following registration or risk revocation for non-use. The United States follows a similar model, whereby a trademark becomes "incontestable" after five years of continuous use post-registration.

Beyond proof of use, renewal is a straightforward affair if ownership has not changed and the trademark applies to the same goods and services it initially did. In such cases, you simply submit the appropriate documents and fee payments.

There is always, of course, the risk of trademark infringement or counterfeiting, and keeping an eye out for both is every bit as important as renewing trademarks on time. You will need a thorough trademark monitoring program overseen by IP experts to check regularly for instances of potential or actual infringement. You must also have ready access to legal counsel that can file oppositions against marks that could be detrimental to yours or defend your registered IP against cancellation actions.

A trusted partner for better brand protection

Known for expertise and efficacy in legal and technical aspects, Dennemeyer is a full-spectrum global IP services provider, offering business-centric consulting hand-in-hand with legal representation.

Contact us today to learn more about how the Dennemeyer family of services can help you reach your goal of building a brand that prospers through trademark strategy.