Promote but Protect Your Brand in Co-branding Situations

Beware of electronic and physical publications which use your logo in a way which suggests your sponsorship. Companies may be motivated to use logos of other brands which may be more well-known in the industry, for the purpose of trying to boost their own image.

For example, let’s take a hypothetical company, DesiKicks, which designs brilliant shoes but has no reputation for quality, long-lasting shoe construction. DesiKicks implements a marketing plan which includes creating a new page on their website, promoting the long-lasting features of their shoes. So far, so good. But DesiKicks would cross the line if, for example, they prominently placed a Nike logo on that page, because it implies that Nike is sponsoring DesiKicks. While the implied message may or may not be true, under U.S. trademark law, Nike reserves the full right to control what their brand is associated with.

Think twice about letting other companies use your logo on electronic or printed materials. Your logo is part of your brand identity, and giving someone else broad freedoms to use your logo can lead to consumers, including your existing customers, having misguided impressions about your company. If your logo is associated with unseemly brands, negative political affiliations, or opinions you and your company do not want to be aligned with, you stand to lose control of your public image in the marketplace.

THINK ABOUT: Having a “linking” license agreement with another company before allowing them to use your logo and/or branding on their own website. This agreement can help you structure exactly how, or how not to, use your logo.

When Should I Have aTrademark Lawyer?

One answer to this question is: Whenever you are about to invest a significant amount of time and money into your branding/corporate identity. The earlier, the better, as rush jobs will naturally cost you more.

You also want to make sure you hire someone that really knows and understands trademark law, not just an attorney who files trademark applications as part of his or her overall law practice. It is true that filing a trademark application is fairly simple, but having expertise matters the most when the application process goes less than smoothly, which is a somewhat regular occurrence.

This is the situation I want business owners to avoid: you pay a designer to develop product packaging for a new line of goods. Then, before contacting a trademark lawyer, you have a printer print 35,000 labels. Or worse, you contacted a non-expert who conducts an inadequate search, and then “OK’d” the design (without knowing that the severity of the situation requires them to use a third party professional search report), and then print the 35,000 labels. Months pass by, and the US Patent and Trademark Office denies your trademark registration because there’s a company in Iowa with similar product packaging, and that company is now opposing your trademark too.

This is what I want you to avoid.

What the Heck Do I Call Myself?

Selecting a business name can be more of a chore than you think it is before you really get into it. Here’s a list of thinking points that I came up with as I am currently developing a new name for my own law practice:

• Availability of the domain name
• If someone else is using it (check the California Secretary of State for LLC’s and corporations, check the USPTO for trademark registrations of your name idea; click “search marks” under the Trademark column)
• Does the name convey the important characteristics of your company/product?
• Will the name appeal to your target market?
• Will the name be distinctive enough to be registrable as a trademark?
• Will the name be easy to remember if someone read it?
• Will the name be easy to remember if someone only heard it?
• Will the name be easy to spell (and therefore easy to Google) if someone only heard it?
• Your company name doesn’t have to do it all; keep in mind that you can always have a tagline with your company name (Ex – McDonalds + “I’m lovin’ it”)
• In the future, it is easier to switch taglines rather than company names

This is only a list off the top of my head to help you start your brainstorming. Alternatively, you can avoid this process if you have several thousand dollars laying around and want to hire a consultant to develop a name for your company.

– ck