Trademarks and Advertising: What Do You Need to Know?

By Josh Gerben, Esq.

Whenever you launch a new advertising or marketing campaign, you potentially open yourself up to trademark liability. In today’s world, companies are highly protective of their intellectual property and do not (and should not) hesitate to act when they see a competitor using words, phrases, slogans, logos, or anything else that they believe infringes on their trademarks.

And the stakes are high – you might spend tens of thousands of dollars on an advertising campaign, only to be told to “cease and desist” within days of launching it. All of that money, all of that time, could be completely wasted.

By analyzing and clearing your potential trademarks, you can help reduce the chances of receiving one of those dreaded enforcement letters and help increase the reach of your brand.

First things first, there will always be risk involved in launching new campaigns. Whether it’s a small social media campaign or a wide-scale print advertising campaign, businesses are constantly watching each other and monitoring for potential infringement. While many companies have legitimate concerns, some companies overreach in their trademark claims in order to control the marketplace. The problem is that even if your company isn’t infringing on another company’s trademark rights, the mere cost of fighting a legal claim can outweigh the costs of scrapping the campaign and starting fresh.

There are a few best practices that can help avoid the pitfalls that many companies fall into.

Analyzing Your Trademarks and Slogans with a Clearance Search

When deciding to launch a new campaign, you should analyze what distinctive elements of your advertisements and marketing potentially implicate trademark law. It might surprise you – words and logos are the obvious ones, but slogans, jingles, and “look and feel” of a product or its packaging can also be protected under trademark law. In some cases, even colors, smells, sounds, and movements can be protected if they uniquely identify a single company or source.

For example, if you are a jewelry company, you need to think twice about using the iconic powder blue color associated with Tiffany’s-brand jewelry.

Once you have reviewed all of these items, you will need to analyze them on a spectrum. Generic and descriptive words or phrases are unlikely to be protected under trademark law, unless one company has spent a significant amount of time and money attaching all consumer recognition to that one brand.

For example, the phrase “American Airlines” is descriptive, but there is only one American Airlines®. “Best Buy” is descriptive for a place where you can get good deals, but there is only one Best Buy® electronics retailer.

However, words or phrases that may need an additional step to connect with goods and services can be trademarks, like Mr. Clean for cleaning solutions. Fanciful words (like Kodak) or arbitrary words (Apple for computers) are also clearly protected under trademark law. This can be a difficult analysis, as it is not always a bright-line between descriptive marks and distinctive marks – a trademark attorney can help clarify questions and provide a detailed analysis.

Once you’ve identified the potential trademarks, slogans or other intellectual property, you should perform a comprehensive search to see if another company is already using something similar for related goods and services. Trademark attorneys offer “comprehensive searches” that look at the United States Patent and Trademark Office database, state trademark law databases, and the marketplace generally for protected marks that may raise the risk of liability.

You can do an initial search of the USPTO database and Google to locate any red flags, but it is impossible to truly know the risk level of using a trademark without a comprehensive search that looks at everything in context of what else is in the marketplace. You might miss a close spelling or sound-alike trademark that could still open you up to potential issues.

Reviewing Your Use of Others Intellectual Property

Comparative advertising can be a powerful tool when it comes to making your product or service standout. There is a whole area of law surrounding false advertising, but under trademark law, it is important to be aware that you have strict limits to how you can use competitors’ trademarks in your own advertising. The key consideration is whether a relevant consumer would be confused by your use of the trademark. This includes the careful, prudent consumer, but also the consumer that is inattentive and distracted, or in a variety of situations that would cause them only to view the ad in a frenetic scroll through their social media feed.

In addition to trademarks, you should be careful not to use someone else’s images, drawings, photographs or advertising copy without their permission. These items are likely protected under copyright law and the unauthorized use of these copyrighted works could open you up to significant legal problems.

Remember to Monitor the Marketplace Yourself

Finally, you should remember to monitor the marketplace yourself to ensure competitors are not using your trademarks improperly. No one likes sending enforcement letters, but sometimes enforcement is necessary to ensure the strength of a trademark. If someone else is using a trademark that is confusingly similar to your own, then your trademark could suffer irreparable harm as consumers confuse their experiences with the other user with your services or product. Good or bad, the lack of control can be catastrophic for a business trying to manage their brand.

Also, if you fail to police your trademarks, then the scope and strength of those trademarks can be significantly reduced.

For example, if you own the fictional Eventari™ trademark for apparel, then (assuming there are no prior users) your trademark rights will likely expand to jewelry, handbags, and other items offered by apparel companies. If someone else starts using Eventari for jewelry and you do nothing, it will be much harder to tell the next person who uses it to handbags that their use would be confusing.

From the perspective of the consumer, they would know that two companies share the same name, but for different products, like ‘Dove’ for chocolate and ‘Dove’ for soap. By effectively protecting your mark, you can help maintain the strength and distinctiveness of your brand.

Advertising and marketing campaigns are all about raising brand awareness and bringing in new customers. However, without proper consideration and analysis, your advertising campaign can quickly become a legal nightmare. By analyzing your trademarks, reviewing your use of other’s trademarks, and monitoring the marketplace, you can help protect your business.

Please note that none of the foregoing may be relied upon as legal advice.  You should always seek the advice of an attorney about your specific situation.

• SHARE THIS ARTICLE ON:

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.