by Brenda L. Speer
From a marketing perspective, there are three important factors for instilling and maintaining your brand—relevancy, consistency and distinctiveness—for good reason. I’m going to give you an intellectual property law attorney’s perspective as to why one of these factors—consistency—is also legally important. To do that, first I’ll digress and give you a primer on trade dress and a brief recap of trademark law.
Aspects of your business identity, or brand, are legally protectable under trade dress and trademark law. Trade dress protection extends to the commercial impression of a business, specifically, the non-functional features of the business expressed in the total image and overall appearance of the goods or services it offers. An excellent example of trade dress is UPS and the ubiquitous brown color that permeates its operations from packaging to uniforms to delivery trucks. In fact, UPS has employed this important trade dress element in its advertising with the slogan “What can Brown do for you?” Brown is an important element of the UPS brand.
If another company were to imitate UPS’ trade dress in a manner that would cause confusion among consumers, then UPS would have an action for trade dress infringement against that competitor. A new or an existing entrant in the delivery business that decides to adopt brown as its signature color is sure to have UPS paying it a not-so-friendly call.
Consistency in the use of your company’s trade dress is important, not only to expressing your brand, but also to legally maintaining your brand. For the law to recognize trade dress, the aspects of the trade dress must be consistently applied and continuously used. For example, McDonald’s trade dress in its restaurants is instantly recognizable to consumers through consistent use of building shape, interior layout, color scheme, décor, packaging, menu offerings and so on. The restaurant wouldn’t even need a sign for you to know it was a McDonald’s restaurant.
Now, let’s say you have 12 restaurants in a metropolitan area and they all have the same name, but they each have a different menu offering, décor and building exterior in both shape and color. Your customers would know you owned all of these restaurants, because they all operate under the same name. However, they’d probably be very confused as to what to expect at any one restaurant they may patronize. Why? Your brand, and thus, your trade dress, is inconsistent. These disparities dilute your brand and negate any trade dress protection you may be able to claim.
Trade dress and trademarks are complementary legal cousins that serve different legal purposes. To recap, the purpose of a trademark is to indicate the source or origin of a good or service. A trademark may be a word, symbol, name, device or any combination thereof. A trademark owner has the exclusive right to use his trademark in conjunction with his particular goods and services.
So why should you care if you consistently use your trademark from a legal perspective? Just as for trade dress, for the law to recognize a trademark, the trademark must be consistently applied and continuously used. Additionally, it is the responsibility of the trademark owner to maintain and enforce his trademark rights. If he doesn’t, he risks losing those rights. As a result, owners need to be particular as to how their trademarks are used, which is why proper, consistent use is important in your branding and marketing.
As you may recall, there are several factors for proper usage. First, a trademark should always be used as an adjective, never as a noun, verb, plural or possessive. Trademarks are properly recited as: <Trademark> brand <good or service>. In common parlance, the word “brand” may be dropped, but the trademark should still be paired with a noun.
Why should a trademark owner care whether its trademark is used as an adjective? For an owner to do otherwise creates the risk of the trademark becoming generic, or an eponym, and generic marks are not entitled to legal protection. Some classic examples of trademarks that became eponyms are aspirin, escalator and thermos. Yes, aspirin was originally a brand name for acetylsalicylic acid medication. Although trademark misuse is common, it’s still not correct and not an excuse for you to use, or to allow others to use, your trademark improperly.
Trademark owners do public relations campaigns to educate consumers on proper use of their trademarks to combat genericide. Both Xerox Corporation (Xerox® copiers) and Kimberly-Clark Corporation (Kleenex® tissues) have conducted such campaigns. Think of Google and its phenomenal success. The trademark Google is often used as a verb. I’m sure you’ve said many times to others searching for information, “Just Google it.” Makes you wonder if the Google trademark may face genericide in the future. Yet another reason why you should care and take heed to consistently apply your brand. Consistency–it’s not just for branding. It’s your legal friend and ally in the competitive marketplace.
© 2008 BL Speer & Associates