Ask the Experts: IP Attorneys Share Insights on How to Protect Your Brand
When building a brand, protecting your unique identity is key. Yet, many small business owners struggle to understand the legal safeguards they could utilize to protect their brands. Intellectual property, especially trademark and copyright law, plays a critical role in branding and marketing. These legal tools, while distinct, can complement one another to safeguard your brand's uniqueness and ensure that consumers recognize and trust it.
In this blog, you’ll learn from our friends and attorneys Diane Chubb, Paulina Proper, and Josh Glikin as they explain intellectual property's critical role in building, protecting, and growing your brand. Learn more about Diane, Paulina, and Josh here.
Before We Begin—Here’s Why Business Owners Should Care
As a business owner, hearing terms like “intellectual property” and “trademark” might feel overwhelming—or maybe you think they don’t really apply to you. But here’s the thing: understanding the role of intellectual property can make a huge difference in protecting everything you’ve worked so hard to build.
We know how much effort goes into creating a business, and your brand is a big part of that. It’s not just about the products or services you offer—it’s about your reputation, your identity, and the trust you’ve built with your clients. Protecting that should be a top priority for every business owner.
Now, let’s explore their insights and strategies for elevating your business through thoughtful intellectual property management.
Can you explain the importance of trademarking for small businesses and how it can protect their brand identity?
Diane Chubb: People make decisions based on brand all the time – which coffee they prefer, what kind of cereal they like, and what kind of car they drive. A trademark is more than a name, a pretty logo design, or a catchy phrase. It embodies all the goodwill that customers and clients associate with that business. Registering a trademark gives that business exclusive rights to that mark. They can stop competitors from using the same or similar marks. Registration can shut down unauthorized use on social media and Amazon.
What are some common mistakes small businesses make regarding trademarks, and how can they avoid them?Diane Chubb: The biggest mistake is inconsistent or improper use of the mark, which can lead to a loss of rights. A trademark is an adjective and must describe a noun. Remember high school English class? For example, there are different brands of facial tissue. Yet everyone asks for a “Kleenex.” Kleenex is the trademark; tissue is the noun. The second biggest mistake is the lack of enforcement. A business might understand the need to create and even register a mark. However, if those rights are not enforced, maintaining exclusivity down the road becomes much more challenging.
I want to apply for a trademark. How can I build/support my case and ensure I successfully register my trademark?
Paulina Proper: The most important first step is to conduct a comprehensive clearance search. This is a search of federal and state trademark registers, together with common law uses (such as company registrations, websites, and Amazon marketplace). The purpose of the search is to ensure that your trademark does not conflict with existing registered marks for similar goods or services. A thorough search will also include a review of the filing history of similar trademarks to anticipate any other legal obstacles to registration. Based on the results of the search, you can determine your legal strategy to maximize the chances of successfully registering your trademark.
How do you help minimize risk and protect your client’s brands as their firm grows?
Paulina Proper: Minimizing risk begins with selecting strong trademarks. These are usually referred to as more “distinctive” marks. This is because a distinctive trademark will offer a client the broadest level of protection against competitors in the marketplace. The strongest trademarks are usually made-up words or established words unrelated to the goods or services offered under the trademark (for example, Lego or Apple). Suggestive trademarks hint at a brand’s goods or services and can be strong and distinctive (for example, Netflix). As businesses grow, the most important way to protect their brands is to focus on correctly and consistently using trademarks in the marketplace. This means that trademarks should be used prominently in all marketing and client-facing communications and that the trademarks’ appearance should match their registrations exactly.
Are some federally registered trademarks considered “stronger” than others for purposes of an infringement lawsuit, or are all federally registered trademarks treated equally in court?
Josh Glikin: Yes, some trademarks are absolutely stronger than others. In fact, one of the factors that federal courts consider when determining whether there’s been an infringement is the “strength of the (plaintiff’s) mark.” So, one registered mark could be considered relatively “weak” in strength, while another could be deemed incredibly strong. The weakest marks that are protectable are called “merely descriptive” because they describe the good or service (examples: “Tropical Tan” suntan oil, “American Airlines”), whereas the strongest are “arbitrary” trademarks (think “Apple” for computers) or “fanciful” marks, which are made up words, like “Google” and “Exxon.”
Is there such a thing as “fair use” of someone else’s trademark that is a defense to an infringement lawsuit against me?
Josh Glikin: Yes! Just because you own a trademark and even a federal trademark registration does not mean others cannot say or write your mark. You do not have a monopoly on it. For example, bloggers, news organizations, and commentators always mention Exxon, Google, Apple, and other trademarks, and they have that right. Competitors can also use each other's trademarks in a “fair use” way, such as by comparing their products and services (e.g., Verizon’s advertisement that its 5G network is larger than T-Mobile’s). These are just a couple of examples of the “fair use” of trademarks.
Do I need a trademark attorney to file a trademark application? Why should I consider hiring one?
Diane Chubb: The Trademark Office is certainly set up to allow applicants to file on their own. What’s missing are the search and strategy. A search determines how the examiners will see your mark when they finally review the application. Does it function as a trademark? Does it conflict with third-party rights? It’s very nuanced, and Examiners are not always consistent. The strategy addresses the future of your business and how your brand grows. Often, people are short-sighted, or they misunderstand how the process works. They spend more money than they need to or create unnecessary problems.
Paulina Proper: International applicants are required to use a U.S. attorney for U.S. federal trademark registration. U.S.-based applicants are not required to use an attorney, but it is highly recommended. This is because trademark law is deceptively complex. Properly navigating through legal details can mean distinguishing between a successful trademark registration and a refusal. Over the past five years, trademark applications filed by individuals have a success rate of about 50%, while those filed by attorneys have a success rate of over 80%.
Josh Glikin: You do not need to be a trademark attorney to file an application, but you should definitely hire one. Think of it this way: you may know how to use a saw, hammer, and nails, but you’d probably hire a carpenter rather than build your own cabinetry. I have seen plenty of trademark registrations that are almost worthless or that provide far less protection than they could have, just because a business owner decided to file it on their own rather than incur the fairly modest expense of a trademark attorney’s assistance.
What advice do you have for companies when developing a new brand or rebranding an existing one?
Diane Chubb: The best brands tell the story of your business. That story is how you appeal to your customers and clients. As such, the process should be seen as a long-term investment in both time and resources. There are no quick answers, and the process can be expensive. However, doing the work correctly will enable your brand to communicate your message and grow with your organization. A good branding agency will work with an experienced trademark and copyright attorney to ensure that you create something that is distinctive and capable of being protected.
Paulina Proper: From a legal perspective, your company’s goal should be to develop a brand that will not be confusingly similar to others already in the same market as you. From a practical perspective, it’s very important to consider the specific market for each client. With brands offering consumer goods, we often counsel our clients to stay away from words that either describe their products or are commonly used either in other brand names or in descriptions of their products. Building a strong consumer brand on monograms or initials can also be more difficult. However, for professional firms, that advice does not necessarily apply. Professional firms often prioritize developing brands that communicate expertise in a particular area, even if that means accepting some descriptiveness. In all cases, companies should conduct due diligence before introducing a new brand to avoid infringement and the need to rebrand.
Josh Glikin: Do not follow this development sequence: choose a trademark, develop a website, marketing materials, etc., go to market, and then retain a trademark lawyer. Do it this way instead: Choose one or more trademark/brand candidates, retain a trademark attorney to provide an opinion about the strength of the candidate marks, the pros and cons of using one over the other, and perform a trademark search so that you know you’re clear to use it. Then, while the attorney files a trademark application or “Intent to Use” application, you develop a website, marketing materials, etc., and go to market.
Final Thoughts on Protecting Your Brand
We want to extend our deepest thanks to Diane Chubb, Paulina Proper, and Josh Glikin for sharing their insights on this critical topic. Understanding the nuances of intellectual property law can be a game-changer for any business owner. It’s not just about safeguarding against copycats or competitors but protecting the identity, reputation, and trust you’ve worked so hard to build.
Your brand is more than a logo or tagline—it’s your business’s fingerprint. By leveraging copyright and trademark, you’re not only protecting your business today but ensuring its growth and resilience for tomorrow. Remember, intellectual property isn’t just for big corporations; it’s for every business owner who wants to secure their hard work and take their brand to the next level.
Whether you’re a new business or looking to solidify your presence, taking the time to understand these legal tools can make all the difference in building a brand that stands the test of time. At Correnti Marketing, our mission is to help businesses build and clarify their brands. We create custom logos + visual identities with IP in mind. We also offer Website + SEO, Content Marketing, and Photography services for firms of all sizes. When you work with our team at Correnti Marketing, we’ll help you define your ideal client profile, craft messaging to attract them and establish a consistent, clear online presence for your firm. Contact us at 860-878-4321 or hello@correntimarketing.com to get started.