Promote & Protect Your Brand

Danielle DeFilippisAmi Bhatt

Norris McLaughlin & Marcus, P.A. www.morethanyourmark.com

What is Your Brand?● Symbols, designs, names, sounds and images –

separating you from your competitor● Why is it important – it is what you use to distinguish

yourself● Examples of strong branding – McDonald’s Golden

Arches● Aspects of your brand – includes trademark, trade

dress, online and social media presence

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What is a Trademark?The term “trademark” includes any word, name, symbol, or device, or any

combination thereof—

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce…to identify

and distinguish his or her goods, including a unique product, from those

manufactured or sold by others and to indicate the source of the goods, even if

that source is unknown.

-- Lanham Act, 15 U.S.C. s. 1127

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Examples of Trademarks

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Sampling of Cointreau’s Trademark and Trade Dress Registrations

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How to Select a Brand: Consider Trademark Strength● Fanciful – Clorox, Kodak● Arbitrary – Apple for computers, Ivory for

soap● Suggestive – Coppertone for sun tan lotion,

Chicken of the Sea for tuna● Descriptive – Shake N’Bake, can be

protected if achieves secondary meaning6

Not All Terms Can be Trademarks● Generic words -- i.e., cracker or computer

when used to refer to relevant goods● Merely descriptive words – “Buy Auto Parts”● Geographically descriptive marks --

Hollywood, Big Apple● Scandalous, disparaging or obscene marks● Surnames – Smith, though can be protected if

achieves secondary meaning7

Trade Dress• Trade dress is the “total image and overall appearance” of a product or its packaging

• Includes features such as size, shape, color or color combinations, features that affect the “total visual image by which the product is presented to customers”

• May be very powerful when established over a period of time in establishing “consumer recognition” regarding a product

• Must be “non-functional”

• Two types:o Product labeling or packaging – may be inherently distinctive and secondary meaning not

requiredo Product design or configuration – more difficult standard to meet; must show “secondary

meaning”, i.e. the purchasing public associates the trade dress with the source, can include a website

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Think Beyond the Mark: Domain Names● Selecting your domain name

● What domain names to purchase

● Cybersquatting

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Social Media● Selecting a brand that is also available on

social media, i.e., Instagram and Twitter

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Going From Brand to Trademark● Preliminary Clearance of Mark● Seek Federal Registration● Building a Portfolio of Marks

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Acquisition of Trademark Rights● In the U.S., trademark rights are acquired through

use of the mark in commerce● Federal registration is not required● Common law marks however do not enjoy the

benefits conferred on federally registered marks● Trademark rights can be acquired even before use

through ITU applications● Global applications?

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Protecting Your Brand● Consistent and Appropriate Use● Avoid Genericide● Enforcement

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Policing and Enforcement● Monitor Usage● Internet Searching, Watch Services

● Cease & Desist Letter● Legal Action● Federal Statutes – Lanham Act● Trademark Infringement● False Advertising

● Remedies● Injunctive Relief● Damages under the Lanham Act● Cybersquatting remedies and damages

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Cointreau v. Controy

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Other Legal Issues

● Forming LLCs for business● Insurance coverage● Advertising and promotion review● Licensing

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