By Marc J. Randazza and Jason A. Fischer
YNOT – It’s all about branding, baby. If you want any kind of business to succeed, it needs a memorable symbol, word or phrase that customers can use as a quick nudge to the portion of their gray matter that stores how they feel about the company and/or its products.
With internet companies, this goes triple. Your brand is the way your customers find you, and once they find you, they know that they can trust you. Sure, they may initially get to your site via a Google search, but if you have failed to brand your business properly, they will not be able to find their way back to buy again, nor will they be able to tell a friend about your products.
A long time ago, the powers that be figured out that repeat business is good for the economy as a whole, that legally protecting a company’s brand would be an effective way to promote this economic benefit … and the concept of a trademark was born.
Trademarks, in general, can be anything that is perceivable by human beings — a word, symbol, color, sound, even a smell — so long as the human beings perceiving the mark are able to associate it with a product or service. The only way mental association can be possible, however, is if each provider for a particular kind of product or service uses a different mark.
When your domain name is the same as your brand name, you might think branding would take care of itself, since two businesses obviously can’t use the same domain name. If only it were that simple. The reality is, if two websites have brand names that are similar to one another, even the possibility that consumers might be confused between them is enough to prevent the essential mental association that allows trademark protection to promote economic success. As a result, if you’ve chosen a protectable mark, and if you’ve taken the necessary steps to protect it, the government will recognize your right to stop your competitors from using the same or a similar mark that might create consumer confusion.
In a legal system where most anticompetitive practices are prohibited, preventing your competitors from doing something could have a tremendous amount of value if exploited properly. Trademarks are no exception to this line of reasoning. So how do you properly qualify for protection?
As mentioned before, you must choose a mark that is capable of being protected in the first place. In order to do that, you have to be creative. The more unique or original your brand is, the more protectable it will be. If you have the same look and feel as every other website, if you use the exact name of the service you are trying to provide (e.g., a search engine called “Search Engine”), then your brand is not going to be distinctive enough to support the mental association required for trademark protection.
The key is to come up with a name or logo or color scheme that is either completely made up or completely arbitrary, or at most suggestive of the qualities you are trying to achieve for your service or product.
From a marketing perspective, you’ll want to fight the instinct to communicate exactly what you are through your branding. You can do that in other ways, such as advertising. Some of the most memorable and successful brand names have nothing to do with the product involved. Look at “Verizon” for telecom services (made up), “Apple” for computers (arbitrary), or “Booty Sweat” for energy drinks (suggestive). Coming up with a clever name, though, is only part of the qualification process.
In order to claim rights in your branding, which will allow you to push others off your turf, you have got to actually use the brand. You have to use it in connection with the marketing and selling of your product or service, and you’ve got to be the first one to market in your field. If someone else gets there before you, tough luck. That guy’s going to be telling you to back off, and you will have to go back to the drawing board.
So how do you know that you’ve picked a protectable mark, or whether you’ve gotten to market first? Well, for about the price of a decent laptop, you can have an attorney register your rights with the U.S. Trademark Office. In the process, an examiner for the office will evaluate the strength of your branding in relation to the products or services you are offering, and let you know if you’re too close to someone else. If everything checks out, you’ll get a trademark certificate, and that will be all the documentation you need when you walk into court to stop a knock-off product from entering the market. If you’re vigilant about protecting your brand and continuously use it in connection with a consistent quality of service, then your trademark registration will be valuable well beyond its cost, as a proxy piece for the goodwill that your business will develop.
Obviously, there are a number of other moving parts involved that we haven’t presented here, but this should give you a general idea of what trademarks are and why they’re important. If you have other questions about your particular needs, you should consult an attorney who has experience in trademark law. Not every lawyer does, so be careful. If yours tells you that “hot pictures” is a great brand name for your adult site, he or she is clearly out of his or her depth. Dump that attorney and put a bit more effort into coming up with a nice, distinctive name. You’ll be better off in the end.
Marc Randazza and Jason Fischer are partners with the Randazza Legal Group, a law practice specializing in First Amendment issues, copyright and trademark protection, defamation, domain-name disputes and employment matters. The firm maintains offices in California, Florida, Nevada and Ontario.
