Strategic Counseling In The Creation And Protection Of Brands

Many lawyers know the principles of trademark law, and the mechanics of how trademark rights are created and protected. Far fewer understand the needs of modern marketing, and how to meet them with the tools that trademark law provides.

For example, you will often hear lawyers describe trademarks as synonymous with brands. While this is true at some level of generality, it can also be misleading.

The law defines a "trademark" as a word, name, symbol or device used by a person "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 § 45, 15 U.S.C. § 1127. For more detail, check out Basics of Trademark Law.

Most marketers today would describe a "brand" in somewhat different terms. A typical formulation: a brand is a distinctive identity that identifies and distinguishes a specific promise associated with a specific product, differentiating that product from others in the market place. For an explanation of the various considerations involved in creating, acquiring and licensing brands, see Building A Brand Portfolio.

These two definitions have much in common, but they have important differences. The traditional trademark definition focuses on the source-identifying function: when you see the Nike "swoosh" on athletic shoes, it tells you they were made by Nike. The definition of "brand" recognizes that in modern marketing, this "source-identifying" function is only one of several things a brand does, and often it is far from the most important of them.

The power (and therefore the value) of a modern brand lies primarily in its ability to convey desirable attributes, feelings and qualities to consumers. Far more important - both to the company and to the consumer - than the awareness that a shoe with the "swoosh" on it was made by a company in Oregon, or by that company's factory in the Philippines, are the expectations about that product which the "swoosh" conveys to consumers: quality is one expectation, certainly, but the consumer will also expect it to embody a contemporary, cutting-edge style, as well as values of self-reliance, discipline and self-worth.

Sometimes a brand can often do even more than promise. A truly effective brand is not only informative, but transformative: it imbues products with positive attributes in the minds of consumers, and will favorably color consumer attitudes toward the product entirely independently of the physical characteristics of the product itself. When a brand has the ability to create this "halo effect" around products and services with which it is associated, it becomes immensely valuable, and therefore immensely attractive as a target for infringement.

These differences are the primary reason why there is tension between what the law will recognize and protect (a trademark) and what marketers and other business people work to create and need to have protected (a brand). By understanding these differences, we are able to help businesses create effective brands that will also be enforceable trademarks, and thereafter to protect, not just the source-identifying aspect of their trademarks, but the full marketing value of their brands.

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