The Business of Creativity

Houchin Consulting PLLC

The overlap of trademark law and branding.

Posted on | April 12, 2006 | No Comments

Most organizations are now understanding (at least fundamentally) the importance of differentiating themselves through programming and branding. Most understand the importance of the institutional logo as a symbolic “indicator of source” relative to the educational services and even tangible “goods” provided by the institution.

Many institutions and organizations are now developing “taglines” to further identify the core identity and mission of their institutions. Sometimes those taglines have been the result of a great deal of effort, research, and creativity.  Sometimes those taglines have developed by attrition, or even the cliché, trite, and overused phrases that have become the personal favorites of an individual with the power to force their use. In any case, the resources invested in connecting that tagline with the institution can be enormous.

If your institution has invested the resources to create a truly distinctive and on-target tagline and other branding elements, it doesn’t seem fair for some other institution to come along later and start using the same clever or market-resonating tagline, slogan, jingle or other branding element that you spent so much time, energy, and money to develop and connect with the “good-will” of your institution in the marketplace.

Protecting this investment in the good will of your institution is what trademark law is all about. The goal of TM law is to protect consumers from confusion as to the source of a good or service they are interested in purchasing.

There are several key things to remember about trademark law:

  1. TM law only protects “distinctive” branding elements that are used as an indicator of the source of the goods or services in commerce. Descriptive phrases MAY become eligible for TM protection as soon as enough consumers
  2. TM protections vest in the first user as soon as the mark (word, graphic, phrase, etc.) is used in commerce. You do not have to file a registration to be protected in the case a “later user” starts using your mark in a way that would confuse consumers as to the source of the goods or services.
  3. If you FAIL to enforce your rights in the mark, you risk losing your rights in the market because in the eyes of the law you’ve “abandoned” the mark.

What does this mean practically? If you have a distinctive tagline or other branding element, start using the “TM” symbol with the mark to indicate that you are using this to identify it as a source indicator of YOUR goods and services. If you register your trademark with the United States Patent and Trademark Office (, you can then start using the ® with your mark.

Why register your mark with the trademark office? Mostly because federal registration eases enforcement of the mark against infringing uses when needed by establishing certain presumptions – saving thousands of dollars in legal fees because one does not have to legally argue and establish the underlying right. Presumptions given upon registration include:

  1. that the mark is valid as a trademark at all;
  2. the presumption that the registrant is the first user of the mark; and
  3. the right to use the mark throughout the entire United States, (unregistered marks may be limited to the practical boundaries of their geography);

Accordingly, before investing institutional resources to bring a new branding element like a tagline into your market, you should:

  1. conduct an internet search (Google, Yahoo!, Etc.) to see if the line is being used elsewhere in your market, or in a market that’s close enough to yours to create consumer confusion.  Remember, the protection vests with the FIRST USER IN COMMERCE, so if someone else is using the mark, you need to go back to the drawing board;
  2. conduct a TM search on the tagline at;
  3. if you’re still in the clear, register the domain name(s) that correspond to the mark because this will head of potential infringers who may themselves be starting at step one above;
  4. if you’re serious about using the mark as an integrated part of your branding strategy, register the mark with the USPTO.

In conclusion, registration filing fees are $275-325 per registration, per class (plus the time and/or legal fees to complete the registration forms). Most institutions have several forms of the actual mark (simple tagline text, graphic treatment, logo, etc.) that will be used in deferent registration classes, so these registration fees can add up pretty quickly.  However, registration fees are still just a drop in the bucket when compared to the resources you’re going to invest in creating and implementing the brand. The registration fees are also a small fraction of the legal fees you will save by registering the mark in the case you have to enforce those rights against an infringer. How much is your brand worth?  It’s not a time to be penny-wise and pound-foolish.


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