Clearing your trademarks prior to launching a business or product is the first step you should be taking in protecting your intellectual property, and your business from unwanted trademark infringement suits. But what about clearing trademarks before launching a new advertising or marketing campaign? Sometimes your campaign involves a particular word or slogan, and it’s highly likely that you find that word or slogan to be totally inventive and unique. And I am sure in relation to what you’re advertising, it is. However, in today’s world, most companies are extremely protective of their intellectual property and they never hesitate (as they shouldn’t) to act when they see someone else using words, slogans, phrases, logos, or really anything else that they perceive infringes on their trademarks.
So what do you need to know?
The stakes are high when it comes to rolling out a new marketing campaign. If you’re past your first few years of business you may have even invested tens of thousands of dollars on one campaign. And without doing the proper research you could face a cease and desist and ultimately be forced to abandon your plan and all that money just gets wasted.
Do a search before you run the campaign!
Just as I suggest you do before beginning the use of a trademark for your brand, you should do a search for the main aspects of your campaign that could cause potential problems. Go through the same process you would in clearing your chosen mark. Do an extensive search, and get a good idea of what is out there.
There will of course always be risks involved in starting a marketing campaign or choosing a particular trademark to use but there are definitely ways to minimize the risks. Remember, even if a company doesn’t have a legitimate claim that you are infringing on their trademarks the cost of figuring out whether they do or not can outweigh the costs of leaving that marketing campaign and starting something new.
Best Practices for Avoiding Infringement
Determine what distinctive elements of your advertising or marketing potentially implicate trademark law. The obvious things are words or logos but look deeper into the campaign. Are you working with a new slogan or jingle? Maybe your campaign has a certain look and feel to it that correlates to the product packaging, sometimes even colors smells, and sounds are protected by trademark law. A good example of this is the Tiffany blue, if you’re selling jewelry-you may want to steer clear of using that color blue. This is going to require that you pick your campaign apart, and determine if any of the elements could uniquely identify a single company or source.
After you have identified potential risk factors, you’re going to want to analyze them to determine what is worth the risk and what isn’t. Think about the trademark law spectrum. Generic and descriptive words or phrases are less likely to be protected under trademark law unless of course, a company has generated a certain level of notoriety and recognition with a generic or descriptive word. Think, American Airlines. That is relatively descriptive of a region and a service but, there is only one American Airlines. On the other end of the spectrum, we have arbitrary or fanciful words that require consumers to use a bit of imagination when connecting the trademark with the product or service. These are what we consider distinctive trademarks.
This spectrum isn’t always going to be easy to identify, and analyzing the potential risks can be somewhat confusing because there is no bright line rules when it comes to descriptive vs distinctive and having an attorney’s help can be very useful at this point in the process.
Run a comprehensive search…
Once you’ve identified the potential trademarks within your campaign do your comprehensive search, or have your attorney do it. Search the USPTO website, social media platforms, state trademark databases, and even a Google search might yield results. You want to analyze the other company’s products and services, their notoriety in the marketplace, and their use of the marks.
Are You Using Others trademarks on purpose?
A lot of marketing campaigns utilize comparative marketing as a strategy to make their product or service stand out. There are limits to this and you need to be aware of them. The key consideration when using a competitor’s trademark for comparative advertising purposes is whether or not the consumer would be confused by your use of the mark. This includes all consumers, those that pay attention to ads and those that don’t. How the ads are presented to the consumer might be an issue here. Is a consumer given a chance to view the competitor’s mark next to yours? Or are they most likely going to see the ads while mindlessly scrolling through their Instagram feed?
You must also be careful not to use the name and likeness of someone else without their permission, this includes photos, drawings or even advertising copy. All people, famous or not, but especially if they’re famous have what we call a right to publicity, so if you plan to use the name and likeness of an individual you need to get permission to do so.
Finally, when it comes to your marketing campaign’s you’re going to want to monitor them as you would any other intellectual property that belongs to your company. If another brand or business begins to use your slogans, words, or logos from the campaign you want to put a stop to it just as you would with any other trademark.
Advertising and marketing are all about raising awareness of your brand, building trust, and bringing in new clients and customers. But, if you fail to take proper considerations and do the necessary analysis these campaigns can become a legal nightmare very quickly. By taking the time to properly analyze your trademarks, review your use of other’s trademarks, and watching the marketplace, you can reduce your liability and protect your business!
Have more questions? Need help with ensuring your marketing isn’t a liability? Email me at Shannon@montgomerypllc.com and let’s chat.
Please note that this is not meant to be legal advice for you or your situation, this is merely some legal research and knowledge on the given topic.