Excerpted from the forthcoming book Brandaide
When it comes to trademarks and the brands they represent, there are two paths. One leads to distinction, the other to extinction. The INSURE path teaches brand owners and their brand team six important steps to follow in order to create build and maintain a legally strong brand, one that increases business value.
The acronym INSURE and the steps it represents—Investigate, Noodle, Select, Use, Register, and Enforce—are the six steps necessary to create, build and protect a brand of distinction. Okay, we admit that it’s a bit corny, but at least it’s easy to remember!
Each of the six steps is important; skipping a step can be disastrous. Taking a shortcut in this process is tantamount to jumping on a subway heading in the wrong direction: you’ll soon realize that your journey is likely to take a lot longer and be more expensive than the original one.
There are no shortcuts to selecting, building, and maintaining a strong brand.
These steps are not separate and distinct; they are interrelated. For example, the ability to maintain a brand through enforcement efforts may very well be tied to the other actions during the earlier Selection step. Failure to investigate can have a huge impact on whether one can successfully register the chosen brand name. Let’s look at each step in greater detail.
1. Investigate—Turn on the lights in a dark room and see who else is there!
A proper, professional search of the brand space is the first stop on the path. It is like turning on the lights in an otherwise dark room: it enables you to see the competition and leads you safely to the to the intended destination. Emerging brand owners often wish to skip this step, instead relying solely upon what they can discern from the Trademark Office records, or worse relying upon the Examiner to tell them what’s there.
A complete search covers much more, including the following:
Non-identical marks that may nonetheless be confusing
State trademarks in all fifty states
Domain names containing the potential mark
Trade directories and phone book listings
There is an additional caveat. Some cases have held that the failure to perform a diligent search prior to widespread use and advertising can be considered evidence of bad faith if you are sued for infringing the rights of a prior user!
2. “Noodle” on it. Think about the results
With a search in hand it’s time to to see whether the prospective mark is worthy of a major investment. Investment includes not only marketing dollars, but also the legal costs of registration and the future costs of maintaining and enforcing rights. Think of a trademark search as a chance to kick the tires of a new car or obtain a termite report before closing on a new home. It is better to know both the problems and benefits prior to making a long-term commitment. Without a full search and proper analysis, it is difficult to formulate a plan.
The plan should include the marks to file for, the exact goods and services to be claimed. (In some cases, the plan should identify which goods and services should be avoided in order to sidestep potential opposition.)
3. Select Wisely-Before making a final selection, search for the intersection where selection meets protection.
During a recent interview for the forthcoming Brandaide book, I discussed the subject of selection with a real expert, Margaret Walker, Senior VP of intellectual property of Xerox Corporation. As Margaret shared: “Let’s understand what makes for a strong trademark and what does not and what your risk tolerance is. Are you okay to go out and invest this much money in something which you are not going to be able to protect down the line?”
What factors should you consider when making a final decision as to the trademarks to marry to your brand values and message? As a general rule, where a brand lands on the continuum of legal protection—from strong to weak—must always be considered.
What is the trademark continuum? The trademark continuum is simply the range of protection afforded to any given term that spans from strong to weak. The strength (and hence, degree) of legal protection is based on a series of labels. These labels include coined, arbitrary, suggestive, descriptive, and generic.
4. Proper Use of the Brand names–Use them correctly or lose ’em
Correct use of a trademark is the manner in which the trademark owner, as well as third parties (including the media), presents a brand name to the public. Proper use is best established when a product first enters the market, and it involves much more than nice brochures, ads, commercials, and pretty packages. The content of these marketing materials should present a clear, consistent presentation of the brand. The marketing materials should also include the identity of the generic product being offered for sale. The term must be used as a trademark. Trademark use is technical in nature, and it means that the term or symbol must appear either on the product itself, the packaging for the product, or the point-of-sale displays.
Without acceptable use of the term as a trademark registration will be delayed and/or denied. Equally important, following registration, public use should be periodically monitored to avoid the risk that the mark becomes descriptive or generic.
5. Register with a Plan–Registrations are invaluable when part of a well-thought-out strategy.
Unlike most of the rest of the world, where rights are acquired by the first to register a mark, in the United States, legal rights in a trademark can be acquired by the first to use a brand name for certain goods or services. However, without a registration, rights are generally limited to the states or territories where goods or services containing the mark are sold. The issue of territorial rights where there is no registration is one of the more troubling issues in trademark law today particularly when it comes to the extent to which nationwide rights can be established by means of Internet sales as opposed to traditional bricks and mortar retail sales within a given territory.
Registration is like recording the deed to a house, allowing the owner to kick squatters out quickly and with minimal expense since it provides constructive notice to the world. Constructive notice is a legal substitute for actual notice, which is code for, “I told you,” to the world (of course, the understanding is that one can’t personally tell everyone in the world) of a claim to ownership of the property.
Recovery of a domain containing a protected trademark is decidedly easier when the brand owner owns a trademark registration. If the owner believes that a registered domain is an infringement, the remedy is to file a Uniform Domain Dispute Resolution Proceeding (UDRP) to seek cancellation of the offending domain.
6. Enforce and Maintain–Snooze and you will Lose
Successful registration brings the brand owner to the most important point in the brand-building process: building and managing the brand’s public persona. The goal is to ensure that the differentiating thoughts and feelings about the brand are maintained and remain valued and valuable.
You might ask, “What is monitoring, and why is it so vital?” Also called policing your mark, monitoring is intended to maintain brand health and avoid loss of rights. This includes implementation of brand protection strategies to reduce risk and liability, which can result from unattended counterfeiting, diversion, tampering, and theft.
First, the law requires it. The brand owner is required to maintain registrations and monitor third-party use of his or her brand names and symbols in the market, and where appropriate, take action against infringers. This does not mean a trademark owner must file a host of costly lawsuits. As we saw earlier, when a mark is not used properly, rights can be lost. A brand protection program not only protects business value, it also bulletproofs the brand from costly legal challenges if attacked. Remember the mantra for guarding brand value: snooze and you lose.
A well-designed monitoring program reduces online poaching and maintains brand equity. The objective of policing rights is to address third-party uses before a little problem grows into a big one. The cost of an ounce of prevention is less than hundreds of thousands of dollars in lawsuits, or even worse, a complete loss of rights.