Editor’s Note: This is the second article in a two-part series on the role of brand as an IP asset. To begin with the first article, please read: Recognizing the Scope and Power of Your Brand.

 

When we survey the range of assets that compose a robust intellectual property (IP) portfolio, the power of brand becomes clear at the outset. Properly understood, brand assets interweave and integrate many different aspects of the enterprise (product development, marketing communications, customer service, packaging and fulfillment, etc.) around components that uniquely position your business in the customer’s mind.

Once we understand the true scope and components that can comprise a world-class brand, what would be some of the ways in which we can protect such a brand?

For most of us, the obvious ‘go-to’ first step is to file for trademark protection on our brand identity (logo and related visual components), brand name and tagline(s).

And yes, that is a critical first step. But it’s just that – a first step. Beyond that, let’s consider ten additional steps you can take to protect your brand comprehensively for now and the future of your business:

  • Step 1: Catalog – An essential starting point is to properly catalog your brand assets so that they are identified, understood and given strategic and economic value by the company.
  • Step 2: Copyright – Protect your company’s web and print content through copyright strategy and (where appropriate), application of the Digital Millennium Copyright Act (DMCA).
  • Step 3: Identify – Review and identify other forms of trademark-appropriate brand components such as product designs, retail experiences, product packaging, etc.
  • Step 4: Align – Ensure that use of your trademarked brand terminology is accurate, consistent and distinctly aligned across the enterprise. Remember that trademark protections can be lost if a brand name becomes indistinguishable with the language used to define the product category that your brand pioneered or leads (think of Kleenex, Vaseline and Xerox).
  • Step 5: Experience – Consider how your product design, store design or other customer experience teams can better create, standardize and project distinct brand elements throughout your customer experience. The more consistent and distinct to your brand these elements are, the more robust the protections you may be able to afford them.

Case Study: The Harley-Davidson Company filed a trademark in 1994 to protect the unique sound that its motorcycles make — something that is literally created by the exhaust coming out of a tailpipe but that is inextricably associated with the Harley-Davidson brand. The application was abandoned by Harley-Davidson after six years of litigation, however, and not because the idea of trademarking the engine’s exhaust sound was questionable. Rather, it was abandoned because Harley-Davidson pursued the trademark application too late and its competitors argued that the exhaust sound, while widely associated with Harley-Davidson, was in fact common to all V-twin motorcycles at the time, including those made by other firms. In other words, if Harley-Davidson had pursued this effort earlier, before the sound itself became widely commonplace, chances are the sound would be federally trademarked today.

  • Step 6: Monitor – Monitor your brand and competitors vigorously. Your competition is likely to be the first source of threats against your brand, as other companies may copy elements of your designs, product innovations and user experience. You need to be aggressive in defining and protecting the brand space you’ve worked so hard to build.
  • Step 7: Contracts – Review your contracts to ensure that intellectual property protection for your brand is incorporated into all terms and conditions clauses.
  • Step 8: Policies – Establish clear policies regarding employee use and protection of brand assets, so that brand protection is recognized as a companywide priority by all personnel.
  • Step 9: Register – It is essential to pursue USPTO and other registrations appropriately — which includes registering your trademarks as applicable in multiple countries where you do business, and also registering domain names, social media identities and other digital ‘real estate’ assets for your brand thoroughly. Again, the more that you clearly define the scope of your brand presence and the longer you have done so, the more successful you are likely to be in protecting that presence legally.
  • 10. Deploy – Finally, take the time and make the investment to truly deploy your brand consistently and constantly. In the consumer marketplace, this is well understood by many companies and brand deployment is a defined business priority, often supported by software and standards that can ensure accurate and consistent use of all brand elements across a firm’s many customer touchpoints.

In the business-to-business world, these assets and their value are just as powerful, but far less likely to be widely understood. Therefore, use this opportunity to think carefully about how you can strengthen the consistency and precision with which you present your brand experience. This brings with it dual benefits, since doing so will strengthen your competitive position and brand mindshare with customers, while also helping to ensure better long-term protection of your brand as a whole.

In summary, brand elements are one of the most critical components in your overall range of intellectual property assets, and must be clearly defined, deployed and protected. The first step to achieving that impact is understanding how and what your brand assets are today, and could be tomorrow.

As a next step, consider working with your intellectual property legal counsel and a brand strategy consultant to identify the scope, strategy and potential power of your brand assets, and then establish business processes for their development and protection over the long term. Considering the enormous economic value your brand can deliver, the return-on-investment from this initiative will clearly deliver time and effort well spent.

-Michael Dilworth 

This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. The opinions expressed in this article are those of the author only and are not necessarily shared by Dilworth IP, its other attorneys, agents, or staff, or its clients.