It’s a brand-new day Featured

8:00pm EDT July 26, 2008

It’s easy to imagine that the day after the first business in the world was founded, the company probably presented its first advertisement, and the art of branding was born.

Perhaps one of the biggest decisions a company can make is how it decides to brand itself. A catchy tune? Perhaps a play on words that reveals the true mission statement of the company?

“A trademark and a copyright can both identify the entity,” says Harvey Yusman, an attorney at Greensfelder, Hemker & Gale, P.C.

Smart Business asked Yusman about what makes a good trademark and how companies should use trademarks to their advantage.

How much of a difference is there between a trademark and a service mark?

The law is exactly the same between the two. Specific services, such as retail grocery, would use the service mark. A trademark is the exact same thing, except instead of promoting a service, you’re branding a specific product. And by doing so, you identify and distinguish your product from somebody else’s product. Think of Nike shoes, with Nike being the trademark and shoes being the generic product. When you see the ‘swoosh’ or the name on the box, you know Nike is distinguishing itself from, say, Adidas.

What can be used as a trademark?

Anything can be a trademark. The Nike swoosh and the Polo pony are very recognizable design trademarks. Words alone can be a trademark. Sound can even be a trademark, as well as slogans or colors. Numbers and letters used separately or at the same time can be a trademark. It can be almost anything that sets your goods or services apart from somebody else’s. That’s your company’s identity. It’s like a franchise. The name itself can be the most important part of the identity, such as McDonald’s. You should be able to go into a McDonald’s in Iowa and get the same kind of hamburger as you would from one in St. Louis, and you expect that because you recognize the name. It’s the very name ‘McDonald’s’ that sets the restaurant apart from the others.

How does copyright work?

Copyright is not as clear. It identifies a lot of things, but it concentrates on the visual aspects of a creation and not the actual brand. That usually includes your brochures, your marketing materials, that sort of thing. And, obviously, your marketing materials are different than anyone else’s, as is your Web site. And those things are identifiable intellectual properties that identify your company.

How do you pick a trademark and make it protectable?

In theory, there are four classifications to a trademark. If it’s being registered at the U.S. Patent and Trademark Office, if you’re defending it in court, if you’re prosecuting somebody else in court, the key is always the same.

The best class is called arbitrary/fanciful. An arbitrary mark is a random word that has no relationship to the product at all. Such as Camel to cigarettes or Apple to computers. Fanciful trademarks are made-up words like Rolex or Kodak.

The next best class is called a suggestive mark. A suggestive mark makes the mind go through two or three steps to make the connection to the product. An example is the trademark ‘uncola,’ which is used in connection with a noncola soft drink.

The third class is called descriptive, and this one should be avoided because it can only be registered with certain qualifications. You need to show the word(s) has a secondary meaning.

The last class can never be registered, and it is the generic mark. These are all specific names that have come to stand for the type of product, like automobiles. Xerox, for example, does a lot of advertising telling people not to use their mark generically. The more creative your mark, the easier it is to register and eventually to protect from other companies.

HARVEY YUSMAN is an attorney at Greensfelder, Hemker & Gale, P.C. Reach him at (314) 516-2630 or hly@greensfelder.com.