October 21, 2016

5 Branding Mistakes that Can Lead to Expensive Legal Trouble


Your business has a brand. It might have multiple brands, and each of those brands has the potential to become extremely valuable intellectual property. However, if you don’t protect your brands with trademarks, you could find yourself in very expensive legal trouble in the future. In fact, you might even lose your brands if you don’t protect them with federal trademark registrations.

It’s not just legal trouble that you could face if you don’t protect your brand with a trademark. It’s also business trouble, because without proper trademark registration that gives you the ability to stop others from using similar brands to identify their goods and services in the marketplace, you could lose opportunities to grow your business by expanding into new industries, new locations, or new verticals.

Fortunately, those types of expensive branding mistakes are totally preventable. Simply start by registering trademarks for your brand elements, including your brand name, logo, slogan, and even unique package designs. If you neglect protecting your brand by getting the right safeguards in place, you’ll hit roadblocks that prevent you from making money in the future.

In other words, your business might be okay in the short-term, but in the long-term, it could be in jeopardy.

Unfortunately, that is one of the expensive branding mistakes I see business owners make all the time. I’ve seen businesses forced to go through expensive rebranding, legal fees and penalties, and even have to close their doors because they didn’t invest in protecting their brands with federal trademark registrations.

Or they protected their brands with trademark applications they filed themselves, or through a cheap legal document services provider website. Ultimately, they end up in my office because expensive branding mistakes were made on those applications.

They pay more money than they would have if they had gotten the right help at the very beginning.

You can avoid these expensive branding mistakes and the expensive problems that go with them by educating yourself.

Expensive Branding Mistakes

1. Choosing the Wrong Brand Name

Don’t fall in love with a brand name until you’re 100 percent sure that you can use it to represent your goods or services in the marketplace both now and in the future. That means you need to invest in a comprehensive trademark search to confirm that the brand name you want to use doesn’t conflict with any existing trademarks.

Also, make sure you choose a brand name that can scale with your business. That means you have to consider how you want your business and brand to grow in the future. Just because a brand name doesn’t conflict with existing trademarks in the current market where you do business doesn’t mean it won’t conflict with existing trademarks in markets where you want to expand in the future. Think long-term when you choose a brand name.

2. Not Registering Your Brand as a Domain Name

When you choose a brand name, you should have a domain name strategy for it. That means you should register your brand as a domain name with the most common extensions, such as .com, .net, and .org, as well as misspellings, plural and singular versions, phonetically similar versions, and so on.

Keep in mind, you shouldn’t register your brand as a domain name until you’ve conducted a comprehensive trademark search to ensure the name doesn’t conflict with any existing trademarks. Of course, you should register your brand as a trademark next. But simply registering your trademark isn’t enough. It’s a lot less expensive to secure your brand as part of your domain name strategy now than it is to try to stop others from using your brand name within a domain name that they register in the future.

3. Not Getting Help to Register Your Trademark

It’s extremely easy to make a mistake when filling out a trademark application, but trust me, this is a mistake you don’t want to make. Remember, when it comes to trademarks, your brand name doesn’t have to be identical to another to be considered a conflict. If there could be a likelihood of confusion between your brand and another in consumers’ minds, then your brand name creates a conflict.

This is one area where not only a comprehensive trademark search is essential but also an opinion from an intellectual property attorney is extremely important. Furthermore, getting help from an experienced intellectual property attorney to complete the trademark application, respond to inquiries (i.e., Office Actions) from the U.S. Patent and Trademark Office, and ensure you have the best possible chances of actually registering your mark is critical.

And one more reminder, beware of websites that call an inexpensive trademark search a “comprehensive search” when they’re not actually comprehensive at all! The old adage is true. You get what you pay for.

4. Not Enforcing Your Brand Trademark

If you have a federal trademark registration for your brand, then you can stop others from using it in the marketplace, which could cause consumer confusion about the source of goods and services. However, you might give up that right if you don’t monitor and enforce your trademark. There is no trademark police, but you are required to enforce your trademark if you don’t want to risk losing it.

In simplest terms, you must make an effort to find infringements and take action to stop infringers from using marks that are confusingly similar to yours. If you don’t try to stop infringers for years, and then suddenly, one day you decide to try to stop an infringer, the U.S. Patent and Trademark Office could say, “You let all of these other infringers co-exist in the marketplace for all of this time, so there’s no reason this other brand can’t co-exist, too.” In other words, your lack of action could destroy all of the time, energy, and money you’ve invested into building your brand.

5. Getting a Cheap Logo for Your Brand

There are a lot of websites where you can get a cheap logo for your brand, but you could be saving money today only to end up spending ten times, a hundred times, or a thousand times more in the future when you run into copyright problems.

There are a couple of key copyright issues that you need to understand when you get a logo designed for your brand. First, you can’t trademark the images in your brand logo (and protect them) if you don’t own the copyright to them. Even if you pay for the images or illustrations that are used in your brand logo, you might not own the copyrights to them.

For example, if you pay for the images or illustrations through a stock photo website, you’re only licensing them. You don’t own them. And the license probably says the images or illustrations can’t be used in trademarks. Read the fine print! If you pay a designer to create the logo and the designer includes images or illustrations, unless he or she owns the copyrights to them and licenses them to you correctly for use in your logo or signs a work-made-for-hire agreement that gives you the copyright ownership to the design, you don’t own the copyright and can’t trademark the logo. That means you can’t protect your logo either.

The Takeaways

The key takeaways are simple. Choose the right brand name, trademark it, and enforce it so you can profit from it. And be sure to get help, because it’s easy to make a very costly mistake.

Copyright Photo via Shutterstock

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Kelley Keller

Kelley Keller Kelley Keller is CEO of Kelley Keller Law and a 20-year veteran of the intellectual property law field with experience helping businesses of all sizes (including many household brands) identify, manage, and protect their trademarks, copyrights, patents, and trade secrets.

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