Category Archives: internet branding

Ignorance not Bliss – Avoiding liability for infringing pay-per-click advertising activity

Often, businesses treat intellectual property just as something they need to own and register, without giving enough thought to the risk of infringement.  Even where the risk of infringement is considered, business owners don’t often realise that they could be liable for the actions of their contractors or employees, even if they are unaware of them.

This is increasingly a problem when it comes to social media and online marketing, and a recent dispute illustrates the risks involved.  Ayesha Vardag, a prominent divorce lawyer, discovered that, unbeknownst to her, the marketing agency her firm had engaged was bidding on the name of her previous employer in order to generate enquiries through Google AdWords.  Following negotiations, Vardag agreed to settle for over £40,000, as reported by The Lawyer.

Pinterest will now have to change its name if it fails to obtain a licence from Premium Interest

European Trademark Office rules Pinterest doesn’t own rights to its name

US social network Pinterest has lost grip of its European trademark rights

US social network Pinterest has lost grip of its European trademark rights

Social networking giant Pinterest lost its trademark battle against Premium Interest, a London-based news aggregation start-up, following a ruling by the European Commission Office for Harmonisation of the Internal Market (OHIM). The implications of the EU trademark office’s decision is that Pinterest could be forced to change its name in Europe.

Premium Interest, founded by Alex Hearn, filed for registration of its European trade mark in January 2012 – two years after Pinterest.com launched. Although Pinterest was active at this time, it had yet to formally enter the European market or even register its name in the US.

Pinterest tried to overcome its own lack of registration by taking advantage of a provision in the trademark regulations which protects well known marks. It argued that the Premium Interest application should be refused as it took unfair advantage of Pinterest’s reputation to register a similar name. However, in the view of the registry, Pinterest failed to prove it was well-known enough in the continent at the time of the registration.

Hearn’s legal representative, Mishcon de Reya’s Adam Morallee, said Pinterest will now have to change its name if it fails to obtain a licence from Premium Interest to use the name Pinterest. In the meantime, Pinterest remains defiant and is set to appeal the ruling. To win the case, Pinterest will need to demonstrate it had rights in Europe before Premium Interest registered its trademark. The site’s prominence in the US will not be considered.

This case highlights the dangers of not acting quickly to protect your brand name in the global marketplace. Indeed, Hearn has also registered its Premium interest trademark in other markets, including Australia.

A solid reputation in one country may be insufficient in a different jurisdiction if you aren’t the first to file for a trademark there, irrespective of the size of your business. This is of particular relevance to digital online businesses.

Given Pinterest’s reputation as a robust defender of its branding – from its Pin-it button, to its curvy P logo, and its discouragement of partners using variations of the words “pin” or “pinterest” as puns in their names – this is a serious blow to the social network.

The moral, as with so many trademark disputes, is to take action early to protect the investment in the brand by registering trade marks in your key markets. Pinterest is now set to face an uphill battle which, apart from the legal fees it has already incurred, will likely involve extortionate settlement fees or the costly and damaging requirement to rebrand.

Beware of Buzz Marketing

Online Brand Protection

Shireen Online Brand Protection BlogBeware of buzz marketing. Writing fake online reviews can land your business in serious trouble and cost you more than you gained in reputation or sales, as evidenced recently by a host of SEO companies caught up in New York’s “Operation Clean Turf”.

A year-long undercover investigation into the reputation management industry caught 19 small businesses engaging in astroturfing, flooding the internet with bogus consumer reviews on websites such as Yelp, Google Local and CitySearch.

Astroturfing is the practice whereby a business pretends to be an ordinary customer, writing glowing reviews about the business’ own products or services, or negative reviews slamming their competitors’.

In a crackdown last month, New York Attorney General Eric T. Schneiderman issued penalties in excess of $350,000 between the offending companies.

Schneiderman’s office discovered that many of the businesses probed had used techniques to conceal their identities, manipulating advanced IP spoofing techniques, setting up fake online profiles on consumer review websites and paying writers in the Philippines, Bangladesh and Eastern Europe to mock up false reviews. In the process, these companies had engaged in illegal and deceptive business practices, violating multiple state laws against false advertising.

“Astroturfing is the 21st century’s version of false advertising – and prosecutors have many tools at their disposal to put an end to it,” Schneiderman warned.

The law in the EU under the Consumer Protection from Unfair Trading Regulations 2008 is stricter than the USA, so that “falsely representing oneself as a consumer” in the context of promoting a product to consumers is a criminal offence, for which the maximum penalty is 2 years imprisonment and/or an unlimited fine. The Regulations are policed by the Office of Fair Trading and Trading Standards, which may also direct complainants to the Advertising Standards Authority.

There are plans to further strengthen the law so British consumers have the right to take direct action against traders for misleading or aggressive practices. The proposed law, when implemented, will empower consumers to make direct claims against traders with whom they have entered a contract or made a payment to as a result of misleading advertising.

Given the anonymity of the web and accessibility to a growing range of social media channels, it’s easy to see how so many businesses succumb to such underhand tactics. However, while astroturfing is unethical – and in most cases illegal – it should be remembered that the ultimate penalty is the PR own-goal scored when caught. Businesses build their brands, above all else, on trust. Being exposed for falsifying reviews and manipulating online discussions could therefore cause irreparable reputational damage, shattering consumer and client relationships which are the lifeblood of any business.

Reputation is critical to any successful business, no matter its size. Astroturfing is an unauthentic and foolish path to follow in a digital age where connection and sharing is just a click away.
The damage to reputation for any company caught trying to steer public commentary around their products and services could prove fatal for your brand.

To find out about the risks online and how to best promote and manage your brand, why not come along to this Own It event at which Shireen Smith will be speaking on 29 January 2014 at 18.30pm. For more information please visit www.own-it.org/events.

Trademark Registration A Lack of Finality?

Trademark Registration – A Lack of Finality?

Trademark Registration a lack of Finality?Over half a million trademark applications are filed each year throughout Europe, and a memo of the European Commission indicates that as of March 2013 there were nearly 10 million trademarks listed in European registers.  Putting it mildly, the Commission notes that “The demand for trade mark protection is high”.  But if you consider the essential purpose of trademarks, a problem starts to emerge.

Are the Trademark Registers too Crowded?

At their most basic, trademarks are a way for consumers to tell the goods and services of one business apart from those of another.  In principle, trade mark rights can also last indefinitely.  So, if the number of trade marks registered continues to grow in this fashion, with every combination, and every permutation being snapped up, surely businesses will run out of words to use?  Some people worry that it is already difficult to find a good .com domain name, but what would be the impact if you faced an uphill struggle when looking for a brand name you could use in general?  What if all possible brand names were taken, what would you call your new business, or products?

Fortunately, even if the rate at which trademarks are applied for is set to increase significantly, this scenario is far from becoming a reality.  First of all, just to cover all possible combinations of letters and numbers with marks only as long as the word ADIDAS would mean every single human being on the planet registering at least 10 trade marks, and that doesn’t take into account stylised text, logos, sounds, colours, shapes or other types of trademark.  Of course, the scope of protection extends further than basic identity – the use of a similar word can constitute infringement of a registered trademark, so not every combination of characters need be registered before it becomes difficult to conceive something novel.  However, this becomes even less of a problem once you account for the fact that the same trademark can be registered by different owners who are not competitors, but even so, the cluttering of the trademark registers is undoubtedly a valid concern.

Trademark Revocation

That’s why the role of trademark revocation is important.  Trademark registrations are not immortal, and although it’s feasible to maintain them indefinitely provided that renewal fees are paid promptly, there are a number of grounds on which a registration might be challenged.  One of the fundamental grounds on which you might apply for revocation of a registered trademark is that it isn’t being used.  Richard Arnold QC put it like this:

“The purpose of revocation is to remove trade marks or parts of the specifications of trade marks where there has not been use.  It is there to serve a purpose in trade; it is the Lipitor that stops the arteries of commerce being blocked with the cholesterol of unused trade marks”

Broadly speaking, if a trademark is left languishing for a continuous period of 5 years, it is vulnerable to revocation.  So, out with the old (owner) and in with the new.  But this is far from the only reason a trademark might be struck from the registers.

As discussed above, the purpose of a trade mark is to help consumers distinguish the goods and services of one undertaking from those of another, and once a word becomes the common name for something, it can lose this ability to designate origin.  This process is referred to by trade mark professionals as genericide – once a trade mark becomes generic it loses its distinctive character.  Some common examples of genericide are Hoover and Escalator – both of which are brand names which have become accepted into general language.  Once this happens, trademark registrations are on shaky ground.

Although far less common, another basis for revocation of a registered trademark is the argument that it is likely to mislead the public, for example if the trademark suggests that products have a particular geographical origin, or a particular quality when in fact they do not.

Invalidation

Aside from revocation, registrations can also be declared invalid.  Whereas the impact of revocation is that the mark is removed from the registers, if a trademark is declared invalid it is treated as never having been registered at all.  Trademark applications occasionally slip through the net, and so a registration might be invalidated if later on, it is discovered that a similar or identical trademark was already registered by someone else, or because another business had built up rights in a conflicting trademark by using it.  Alternatively, having been reassessed the trademark could be deemed descriptive in retrospect, and therefore lacking the ability to distinguish the origin of goods and service.

Should I still try to Register my Trademark?

So, registration is feasibly indefinite, but there are no guarantees as it suffers from a lack of finality.  Does this mean it isn’t worth registering? Absolutely not. The key message here is that there is far more to registering a trademark than simply making it onto the registers.  All of the risks mentioned above can be managed by taking care at the outset.  By casting a critical eye over your trademark before applying for registration, an expert will be able to assess whether it might later be deemed descriptive, or deceptive, and a professional search will reduce the chances of conflicting rights turning up out of the blue later on.  They will also be able to advise you of ways to maintain your registration, for example by using the registered trademark symbol you may be able to avoid genericide, alerting people to the fact that the mark isn’t simply a common word but an indication that you are the source of the product.

To help avoid losing your rights you should also take care to make genuine use of your trademark.  The concept of genuine use is complex, and you might be surprised by some of the situations which don’t meet this test.  For example, a manufacturer promoted its clothes by giving away drinks labelled with its brand, and because the freebies were not distributed with the aim of penetrating the drinks market, it was not sufficient to maintain rights over the brand in that class of goods.  On a related note, it’s important that you take care to use the mark in the way it is registered, and if you do make a change, for example by altering the design of your logo, you should consider whether it’s necessary to file a fresh application for the variation.

Your Brand and Your Domain Name

Choosing names that say what your business does on the tin may not be the best approach to choosing domain names online, despite it being an approach many businesses have adopted in the past.

Often, it seems like a good idea to follow in the footsteps of those who have gone before, taking what looks like the tried and tested approach.

However, whilst in the past descriptive domain names may have given businesses certain advantages online, recent changes to Google’s algorithm at the end of 2012 have done away with many of these previous benefits.

The early days of the Internet

When the Internet was young, and not unlike a small village with just one top shop, one grocery store, one pet store, and other businesses who were the trailblazers in their industry with a website, a tradition started of using descriptive names or phrases for domain names. People searching for these pioneering online suppliers could readily find them by using descriptive keywords to search for them, and search engines made the websites easy to find.  In those early days if you wanted to find a business chances are you would just type into your browser Books.com when looking for books or Hotels.com to find somewhere to stay and so on. Nowadays, less than 25% search in this way.

Google’s algorithm

As online business took off, and nearly every business put up a website, the online space became overcrowded.  A high ranking in search results grew to be the key objective of many businesses, as more and more of us turned to Google whenever we wanted to find a product or service, and so the practice of using descriptive domain names became entrenched because Google continued to give a preference to domain names describing what their potential customers were searching for. For example if you were called Jobs.com, you would be more likely to show up in the top results, assuming your website was otherwise well designed.

However, this led to marketers using “exact-match domain names” as a way to cheat the system, pushing low quality websites up in search result listings. With Google’s recent changes to its algorithm, Google has made it harder for sites to cut corners, ensuring that the focus is on quality and relevance. Today, Jobs.com does not even make the top 10 search results for a search for ‘Jobs’.

Brands over descriptive

Selecting descriptive names has never been good practice in branding, as these names do little to set you apart from competitors, but now with Google’s alterations to its algorithm, this method of choosing names is even more inappropriate.

Even before this algorithm change, the online environment that influenced people’s practices has been quietly moving on away from descriptive names, with users searching online being much more likely to opt to visit sites with recognised brand names. Rand Fishkin, a renowned online marketing expert and co-founder of SEOMoz, which helps websites get found online, summed up the point concisely in a recent blog post: ‘Unbranded sites may be losing significant amounts of traffic vs. their better-branded competition. Choosing a “keyword-match” domain seems like a worse decision than ever’.

We couldn’t agree more, and encourage readers to take care when choosing a domain name for products and services.  Choosing a distinctive name comes with a whole host of benefits, not least of which is the opportunity to own it through trade mark registration. It is also easier to deal with competitors who seek to copy your domain names. Do get in touch if this resonates with you, and you want to find out more about branding your business.

How To Secure An Unusual Trademark

Whilst the most common use of trademarks is to legally protect brand names or logos, this is by no means the only way in which a trademark reinforces a brand.

Trademarks act to identify the source of a good or service to consumers, and therefore a trademark can cover any aspect of a brand that denotes a particular company in the mind of consumers. For example, as mentioned on the Azrights blog Cadbury secured the colour purple as a trademark, Coca Cola has trademarked its iconic glass bottle shape.

With the Internet making competition ever more fierce, and difficult for brands to stand out, securing an unusual trademark could help give your company that added distinctiveness which competitors could not emulate. However, securing an unusual mark is not straightforward.

The way Coca-Cola was able to get a monopoly over its bottle shape demonstrates what can be involved in securing an unusual trademark.

Coca-Cola & its distinctive bottle shape

The design of Coca-Cola’s instantly recognisable glass bottle is highly distinctive. Even feeling the contoured bottle shape in the dark can be enough for the identity of the brand to be instantly recognised. Coca-Cola’s bottle shape helps it to stand out from the crowd because no other drinks manufacturer is able to copy its bottle design.

However, this is something that the company has had to gradually achieve over a number of years.

In order to be granted a trademark for the shape, Coca-Cola first protected the bottle design with a registration which gave it a monopoly over the design.  In the EU a design registration gives you a maximum of 25 years protection. Therefore, although a design registration is effective in the short-run, in order to ensure long term exclusivity Coca-Cola needed a trademark.

In order to get a trademark granted Coca Cola had to make sure the bottle design was associated in consumers’ minds with its name.  So, the bottle needed to be identified with the brand whenever they saw the bottle. To achieve this, the company promoted the bottle heavily during the time it had design protection.

Once consumers did identify the bottle shape with Coca-Cola the company was able to secure a trademark over the bottle shape.  This means that as long as Coca-Cola renews its trademark, and uses the bottle shape, no other company in the world can use such a bottle shape.  That is very powerful IP indeed.

How you can secure an unusual trademark

So if your company wants to gain a monopoly over a particular brand identifier, make it can become synonymous with your brand.  You’ll need to put appropriate intellectual property rights in place in order to stop competitors copying your branding in the meantime. So, if you want to associate a shape with your brand, make sure you register it soon enough, using a series of images to properly protect the design first.  If you have an effective registration that can give you a monopoly over the shape for 25 years, then vigorously promote the design as something that is synonymous with your brand. For those on a smaller budget, social media may make it more affordable to achieve such a task without breaking the bank.

If you want to secure a trademark in a colour, or other unusual identifier, let us know by completing our enquiry form. In the meantime, if you want to learn more about the legal aspects of branding why not buy a copy of Legally Branded, a book that explains the relevant law in an accessible way?

Copyright Protection: How to Manage Copyright in an Unregulated Space

‘I have endeavoured in this Ghostly little book, to raise the Ghost of an Idea, which shall not put my readers out of humour with themselves, with each other, with the season, or with me. May it haunt their houses pleasantly, and no one wish to lay it.’ – Charles Dickens

Dickens’ ‘A Christmas Carol’ is a tale of generosity, giving, and a story often attributed to reigniting the Victorian Christmas spirit at a time when it had started to wane. Indeed, it has been attributed as being partly responsible for the way we celebrate Christmas today.

Dickens and ‘Piracy’

When it was published the book was an immediate success, selling six thousand copies on the first few days of sales. However, despite the book’s success, Dickens did not make much money out of it in part because his work suffered at the hand of ‘pirates’.

Unlike today, copyright laws in the Victorian times did not give protection in countries outside of where a work was first produced and created. Therefore after ‘A Christmas Carol’ was published, copies started popping up abroad in America, produced by publishing houses very cheaply.  They gave Dickens absolutely no financial benefit.

Berne Convention

As the world continues to change, laws, and in this instance copyright laws, sometimes take a while to adapt to the new problems these changes present. It was not until 1893, 50 years after the publication of ‘A Christmas Carol’, that the Berne Convention was created to give authors copyright protection over their work abroad as well as in the country in which the work was created

Copyright in the Internet Age

However, even though nowadays owners of copyrighted work no longer have to worry about the lack of control over work being produced abroad, there is a new challenge that has not yet been solved by current copyright laws: the Internet.

Your company might not be looking to create the next ‘A Christmas Carol’, but content your company produces may still be extremely valuable for the business – yet the Internet can make it difficult to ensure that people don’t misuse your copyrighted content.

Sometimes when the laws have not caught up with advances in technology, it is an unfortunate reality that there is little you can do in practice to tackle infringement, beyond prevention.

You can campaign for changes in the law (as Dickens tried to do in the Victorian times), or hope that there will be a way for the law to better protect your work or content.  However, sometimes the best that you can do is to understand how to benefit from the work you produce in the unregulated world of the Internet, despite the fact that some people may take advantage of your work and infringe your copyright.

The ‘Freemium’ Business Model

An important factor in building success online is attracting customers to your website. And in this Internet age one of the main things people are looking for is information, meaning that freely available and useful online content can be vital in achieving online success.

Giving information away for free can actually prove financially beneficial in unexpected ways. For Dickens, despite the fact he did not make money in the US from selling copies of his book, when he went over there to visit he discovered that he had a large fan base, and managed to make a good amount of money from giving readings of his works.

This just goes to show that just because the law might not adequately protect your copyrighted content from pirates; it does not always mean your company will suffer. Some successful bands have also profited from giving material away for free.  For example, Radiohead decided to allow customers to decide how much they paid for their album ‘In Rainbows’. And The Grateful Dead managed to create a devoted following and generate $60 million a year through their unorthodox approach to protecting their intellectual property, such as by allowing audiences to tape their concerts.

Managing Your Copyright Online

However, if you are concerned about keeping your copyright protected, here are some tips that might help:

  • Before publishing content online, evaluate what the consequences might be for your business if someone copied your content
  • Consider using measures like backlink, Google Alerts or copyscape.com to help you track down people who copy your site’s content.
  • If you know the Internet Protocol (IP) address of a copyright infringer, you can ban them from using your website (although they could still get round this by changing their IP address).

If you want to learn more about how to protect copyright or other IP online, buy a copy of Legally Branded. You can download free chapter of the book here.

This post was co-authored by Chloe Smith

Branding For Success

I presented this presentation at Triumphant Event’s one day ‘Make it BIG in 2013′ event on November 24. For those who missed it, here is a transcript of my speech along with the accompanying slides.

To thrive in a crowded market, a business has to be clear about its niche, positioning, brand values – its whole identity – which should then be reflected in appropriate designs. This is essential if you’re to become a brand in the sense of having pre-sold clients who want to do business with you.  That’s how you stop having to compete on price.  However, what is less well-known is that there are fundamental Intellectual Property issues that must be addressed if you’re to reap the benefits of your success.  I’ll be discussing some of these IP issues in the next 20 minutes as they’re important if you’re aiming to make it big in 2013.

I’ll just say a few words about my background before I begin. I’ve practised IP law for nearly 15 years, having qualified as a solicitor more than 25 years ago.  I worked at Coopers & Lybrand, Reuters, and Eversheds before setting up my own law firm 8 years ago.  Going into business on my own made the legal work really enjoyable in a way it had never been before.  I love helping businesses to bring their ideas to life and one area of my focus is on names, as they raise a number of legal issues, some of which I’ll touch on here.

Inevitably when you work in an area you spot problems, and one I’ve noticed is the widespread confusion about what ‘branding’ actually is.  To a designer a brand is the logo.  A marketer may emphasise the niche, and positioning, while a communications professional will stress the importance of consistent messages, and an IP lawyer will emphasise trademarks and copyright.  The fact is that the skills of many different professionals are relevant to branding.  So it’s not surprising that people don’t really know who to turn to, and in what order when they brand new products and services.  And that includes people in the branding industry. A very experienced and well-educated marketing director contact confessed that he didn’t really know in what order to do things when he wanted to create a new brand.

This explains why companies so often make mistakes with branding. In practice, they’ll pick a name they like, see if the domain is available and buy it, then they’ll commission someone to produce a brand identity.  At the very end of the process they may or may not turn to a lawyer to protect the brand. Some people do nothing at all, while others might register a trademark themselves.  This puts a business at great risk of either using a name which infringes on someone else’s rights or of using a name that’s inadequate to meet the wider long term business objectives.  The reason the risk of infringing a name is quite high is that the trademark registers are cluttered with registrations so that it can be difficult to find names that are available to use for the various purposes for which you may need to use the name. Also, using similar names to those which someone else has already trademarked is an infringement, so it’s not just the exact same names that are out of bounds.

It’s worth knowing that if someone else has a better right to a name you’re using, you would be infringing on their rights whether or not you may have registered a domain, a company or even a trade mark.  Registrations can be and are cancelled. The owner of a similar trademark may not be aware of you or may not be concerned while you’re a small scale operation.  It may be a different story though if you make it big.  Imagine what it would feel like to receive a cease and desist letter requiring you to change your name immediately, to provide a list of your customers, sign an undertaking and pay damages.  From the perspective of the trademark owner, you only achieved your success because you were riding off the back of their brand, so it’s fair enough to ask you to account for the profits you made during the time you used their brand name.

A name is where your brand both begins and ends. It’s the first thing customers hear when they discover your business, and the last thing they remember at the end, so it’s vital to own the rights in your brand name.  Intellectual property law is similar to the law of physical property.  If you were developing a plot of land you’d be sure to buy the land first before investing in building on it. The last thing you’d want would be to run the risk  that someone else had better title to it.  It’s the same with intellectual property rights over a brand name.  Don’t assume the professionals who may have helped you to brand your business must have taken care of the IP aspects because it’s unlikely they’ll have done so.  Their expertise is not in IP law.  I wrote my book Legally Branded, because of the widespread lack of accessible information on the IP aspects of branding.

It’s not possible to have copyright in a name, no matter how much money you may have invested in creating a name. Trademarks are the only way to stake your claim to a name. Trademarks are tools to capture the economic potential in your business, and are central to how the law protects a business against unfair competition.  Trademarks give you legal title to a name, and exclusive right to use it for your business.  This makes it easier to enforce licensing and other agreements.  Some entrepreneurs assume trademarks are just about protecting goodwill, but they’re much more than that.  The reason a trademark is desirable is to monetise your business.  You don’t need to be intending to be the next Coca-Cola for trademarking to be relevant to your plans.  If you have a big vision you’ll need trademarks to grow the business, both nationally and internationally.  The right strategy for registration will differ depending on your business plans and the type of business you’re in. With some niches you are very vulnerable unless you are quick to register your mark in other countries once your concept takes off.

Trademark infringement is something I come across a lot because it’s quite common given the way in which business owners pick names.  So, it’s a real risk not just a theoretical one.  Having the distractions of potential litigation and rebranding is not a risk any sensible business owner should run.   I don’t want to depress you, but it’s important to realise that you could be sitting on a time bomb.

Let me give a couple of examples. Mcdonald’s takes a somewhat aggressive stance to users of the ‘Mc’ prefix.  So Elizabeth McCaughey had to stop using the name McCoffee for her coffee shop even though she had operated for 17 years with that name, and used the name in the first place because it was a play on the word in her own name.

Some businesses that are infringing on the rights of a trademark owner have to rebrand virtually overnight.  For example, Scrabulous one of the first Scrabble like games on Facebook was removed by Facebook as soon as Hasbro complained about trademark infringement despite having gone viral. We will never know how big Scrabulous would have been today if it had opted for a better name. The setback cost them dearly as it paved the way for Zynga to enter and dominate the market with its successful Words with Friends app.

A different aspect to consider about the name you’re using is whether it’s capable of taking your business to the heights you envisage for it.  For example, using a name that says what your business does on the tin, so to speak, often appeals to people. But there are powerful legal reasons why a descriptive name should be avoided.  Descriptive names inevitably limit a business’ potential.  They’re only suitable as an option in the early stages of a business that’s testing the waters with a new concept, and wants to avoid trademarking considerations, and to benefit from a name that communicates what it does.  However, a better name should be chosen as soon as the concept proves viable. A descriptive name is actually devoid of personality.  It’s like calling a dog, dog.  You’re not giving that dog its own unique name, and identity, and it’s no different when branding a business.  A trademarkable name protects consumers by providing a reliable way for them to find products they’ve bought in the past.  If I’ve enjoyed a chocolate called Milky Way, and want to buy another one, I should not be confused by seeing chocolates with names like Mulky Wai.  The law will stop other traders calling their chocolates by a name that’s misleadingly similar to Milky Way, but if the chocolate has no name, because it’s simply called chocolate, the law cannot and will not stop other chocolate sellers also calling their chocolate bars ‘chocolate’.  So, if a competitor starts using the same name or a similar name to yours, there’s little you can realistically do to stop them if yours is a descriptive name and you inevitably lose some of your potential customers to competitors.

To understand the limiting effect a descriptive name could have on a business let’s use a fictitious example.  Say there’s a website which connects dog owners looking to leave their dog with other dog lovers instead of in kennels when they’re away on holiday. If the website were called Dog Vacation it could be deemed descriptive. If the name couldn’t be trademarked, the website’s success couldn’t be fully exploited through licensing others internationally to set up and run similar websites in their home market. In fact, such a niche website has been created just in the past year in the USA, and luckily its name is capable of legal protection because it’s called Dog VACAY, not Dog Vacation.  This business currently has a multi-million dollar value mainly due to the lively and active community of dog lovers it has given rise to.

Apart from licensing people in other countries, exploiting the value in an engaged community, such as Dog Vacay could include extending the brand into areas such as pet foods, pet furniture and accessories and so on by licensing others to apply the brand name to their products.  So the bottom line is that licensing depends on having a name you can stop other people using.  You would register a trademark in your home country and then ultimately in other countries if you’re to avoid seeing your business copied by unlicensed individuals elsewhere who may even use the name Dog Vacay unless the US company has been astute enough to register a trademark in other markets as well as in the USA. It inevitably reduces the value of your business if you can’t properly control use of its name.

There are a number of do’s and don’ts around what makes for a good name, but the most important thing to remember is that a name must be legally effective, and capable of getting you to your destination.  It’s not just about whether you like a name or whether it sounds good or even whether it is capable of being trademarked.  It needs to be a name that suits your business plan and objectives. One reason businesses have been attracted to descriptive names in the past, is that Google historically looked favourably on domain names that included relevant keywords.  For example, dogvacation.com would be likely to come up in a search for “dog vacation”.  However, Google discovered that this led many low quality webpages to appear in search results, as marketers were taking advantage of descriptive domain names to increase visibility.  In response, in September Google tweaked its algorithm to give less weight to domain names which are an exact match for a search query, so even this limited benefit is no longer a worthwhile reason to use a descriptive rather than distinctive name for your business online.

Zumba the dance is a great example of an effective name for a business that spread like wildfire internationally, as well as extending into all sorts of different categories like DVDs, clothes, and so on. So, make sure you’ve got the right name if you want to make it big because the wrong name will put a ceiling on your ultimate business growth, no matter how good a business you build, and how effective you are as an entrepreneur. Once you have a powerful name, put in place appropriate IP protections and a strategy for international trademarking.  That’s the way to bulletproof your brand so there are no limits on how your business can grow once it captures the public’s imagination in 2013.  I wish you every success in the upcoming year.

If you’re interested in learning more about this topic, why not buy a copy of Shireen’s book Legally Branded which is available on Amazon? You can download the contents and the first chapter free at www.legallybranded.co.uk.

if you’re interested to understand this topic more why not buy a copy of Shireen’s book Legally Branded which is available on Amazon, and you can download the contents and first chapter free at www.legallybranded.co.uk

Olympic Brand Sponsorship Race- Why is McDonald’s Underperforming?

The Olympics is a time of sport, athleticism, and competition. However, it is not just athletes who are competing, but the brands sponsoring the event are also involved in their own brand race. Whilst many are tuning in to see which athlete will win a gold medal, others are on the look out to see which brand sponsoring the Olympics will come out on top. Due to the prominence of social media in the 2012 Games, this has created a new way to measure how much each brand has benefited from their sponsorship of the games.

Mediacom has created an Olympic tracker which gives daily and weekly updates about each Olympic brand’s twitter tracker score, measuring the amount of positive or negative sentiment felt towards each brand.  

Whilst certain brands such as Coca-Cola and PG tips are consistently performing well, McDonalds has been trailing behind. McDonald’s has been languishing at the bottom of the table for some time now, with scores of between minus 70,000 to 100,000. Last week saw a further increase in negative sentiment towards the brand with their tracker score reaching lower than minus 1m.

So why is McDonald’s so far behind on the Olympic tracker?

McDonald’s was first hit by concerns about junk food as was Cadbury, and Coca Cola.  These brands’ association with the Olympic games was seen as sending the wrong message, due to their being  poor examples of how to stay healthy. An article published in the Lancet, a medical journal, stated that ‘the Games should encourage physical activity, promote healthy living, and inspire the next generation to exercise. However, marring this healthy vision has been the choice of junk food and drink giants, – McDonald’s, Coca-Cola and Cadbury – as major sponsors.”

Despite Cadbury and Coca- Cola also presenting a concern in relation to their sponsorship of the games, they have remained relatively unscathed. Coca-Cola’s sponsorship of the Olympic torch and their ‘feel the beat’ campaign has generated a significant amount of positive feedback, as has Cadburys ‘ Unwrap Gold’ promotion, which gives consumers the chance to win tickets to watch the Olympics.

Background to McDonald’s sponsorship

McDonald’s decided to become a sponsor of the Games 40 years ago as a way to deflect criticism about the health impact of their products. This strategy seems to be doing more harm than good this year, with numerous people commenting on Twitter about the contradictory nature of McDonald’s involvement in the Olympics, with the most popular comparison being that it is like a cigarette company sponsoring a cancer charity.

However, the way McDonalds have responded to these concerns has attracted increased criticism.  The predominant concern with McDonald’s involvement in the Olympics is that this will give people a misleading impression about the quality of McDonald’s food.

The problem with McDonald’s campaign appears to be two-fold. Firstly, despite McDonald’s efforts to turn their image around from being fatty and unhealthy, this has not yet influenced how the majority of the public perceive the brand. Secondly, the social nature of the games gives people a much bigger platform to voice their concerns, meaning it is more vital than ever to align the brand image McDonald’s believes it has, to the way others see it.

The way McDonald’s sees itself is as providing good food, being environmentally friendly, and as being a fun place for families to eat. Yet, the public regard McDonald’s food as unhealthy and as being high in salt, and fat. Therefore McDonald’s sponsorship of the games, and adverts depicting various athletes eating their food, is perceived as misleading. People throw negative comments at the brand on the grounds that no Olympian would have eaten a McDonald’s for at least a year.

McDonald’s has had some positive feedback about its initiatives to provide calorie content and nutritional information about all their food.  Also, their offering of a fruit, vegetable and low-fat dairy option with their happy meals served at the games has gone down well. These all do signal a step in the right direction for the brand.  However, until their reputation has been substantially altered, strategies aimed at calling the brand ‘healthy’ will be seen as deceptive.

Boris’ Plug

Take, for example, the reaction against Boris’s plugging of the brand. Defending the fast-food giant against criticism, Boris said ‘It’s all just bourgeois snobbery. It’s classic liberal hysteria about very nutritious, delicious food- extremely good for you I’m told- not that I eat a lot of it myself. Apparently the stuff is absolutely bursting with nutrients’.

The negative reaction produced by this statement was then amplified when Frankie Boyle on Twitter, who has over 800,000 followers, commented ‘Don’t know how much sponsorship McDonalds paid for the Olympic mayor to be a f***ing clown.”

These comments stirred up negative opinion about McDonald’s association with the Olympics, and made the public feel that they were being miss-sold the brand, especially due to Boris’s admission that he does not eat much of the food himself.

Conclusion

Whilst the values a brand believes in and wants to reflect are important, this has to be aligned with the perception of the brand by others. Denying what the public perceive and insisting on promoting a certain image before the public is convinced there has been a change can backfire and cause a bad reaction as seems to have happened here.

Do You Know Why Your Brand Could Be Worthless?

In this post I’m going to offer some information that I think might be quite useful to you when you’re establishing a new business or product.

You’re likely to be thinking about a name, commissioning a website and logo to launch it, and considering how you will market it and so on.

Relatively few people think about the legal aspects until they’ve already chosen a name, created a website and maybe even finalised their branding. When they do turn to a lawyer it’s typically to register a trade mark, or perhaps because they wonder whether there’s anything they can do to protect their business concept.

I often ask myself why do people assume lawyers should be approached at the END of a branding or website project?  It’s so strikingly different to what happens in other areas of business life. If you were about to build a house, you’d first contact a lawyer to check that you could buy the plot of land. You wouldn’t simply commission builders and take your chances that you might later secure rights to the land. The risk that someone might pop up to claim better title to the land and throw you off their turf wouldn’t be one most people would willingly entertain. Also, you’d want to know whether other people have lodged planning permission to construct buildings or roads, and whether you have all the rights of access that you need and so on.  You’d know to first sort out all these ownership issues.

Maybe because intangibles are invisible people don’t really understand that there are laws – called intellectual property or IP – which govern their branding projects.  The name you choose is the branding equivalent of your plot land, while other branding elements such as website projects are like the buildings you construct on the land.  Intangibles are every bit as important, if not more important than physical assets of your business.

While the likes of Coca Cola have access to large branding or advertising agencies and highly specialist legal teams when making their branding decisions, small and medium size businesses don’t often have the benefit of timely proactive advice to help them to make good branding choices.

I suggest you take the time to understand the basics of IP law relating to brands so you find a suitably qualified lawyer to help you to achieve a strong brand.  The requirements for powerful intellectual property rights and powerful brands are typically the same.

A specialist IP brand solicitor can advise whether the name is a good one from a legal perspective because they’ll have day to day experience of trade mark registration work, copyright issues and website projects. To get value for money from an IP brand lawyer consult them BEFORE you pick your brand name, logo and tagline or commission your website.  Nothing protects a brand better than a well-chosen name or tagline. This is unfortunately not well understood that it’s the choice that determines how easy or difficult you will find it to protect your brand, and how costly it will be.

Most people assume their branding or internet professionals know all the necessary law relating to brands and websites, but they don’t. That’s not their focus or expertise. Just as you wouldn’t engage architects expecting them to also check that you can own the land on which you intend to build your house, or to know what type of locks you need to install to burglar-proof it, so it’s inappropriate to expect non-lawyers to take care of your IP rights.

The legal issues around brands and names are surprisingly complex.

Branding and internet professionals are primarily thinking about marketing, communications, and visual identity when creating websites or selecting brand elements like names and taglines for you. They may be able to do some rudimentary checks themselves to see whether a proposed name or logo is already registered by someone else, but their focus is on whether the name, tagline, logo or other component would be effective as marketing tools. An IP branding lawyer would know whether it’s a strong name which could support your business plans, as well as what checks are necessary both in the UK and elsewhere if your plans include an international dimension. It’s certainly not as straightforward as searching to see whether the same name or logo is already registered.  Similar names or logos could also pose problems, and there are a host of other considerations which your lawyer is well placed to advise upon.

A real separation exists between the worlds of branding and the law. To get a powerful brand that’s legally effective involves a close collaboration between IP brand lawyers and branding professionals. Currently it is not the norm at the smaller agency end to have such collaborative working. So whether you yourself choose your name or get a branding agency to help you, make sure you don’t end up with a weak brand name. This reduces its value as a long term IP asset.

Some name choices would be the equivalent of building a house which others could regularly break into and steal from.  I’ll explain why by taking the dance called ZUMBA as an example. The business that created this dance has given it a distinctive name and trade marked it in many countries worldwide. This means that anyone wanting to provide ZUMBA classes will need to be accredited by the business. Had the company instead chosen a descriptive name for their dance, such as NEW LATIN DANCE, they probably wouldn’t have a business now. Even if they’d managed to register this name as a trade mark in one country they’d have a tough time registering it in another and ultimately no matter how much money they spent, they would have not be able to prevent other people from offering classes featuring their invented dance.

So, for a business such as ZUMBA it would have been a bad idea to choose a descriptive name.  Instead of collecting revenues, they’d have been spending a fortune on litigation.  So, if you’ve got big plans for your business, don’t leave it till the end of your branding project to consult an IP brand lawyer.  That would reduce the legal input to one of registering and protecting your IP rights, such as they are.  It would be too late to give you effective advice.  Registering your own trade mark and not getting any legal advice at all is an even worse decision because few people manage to properly cover the full scope of their business when they do their own registration.  Your trade mark is important, so consult a specialist brand lawyer.  Contact me at Azrights or look out for my book Legally Branded out in the spring of 2012.