Designer’s guide to the legal aspects of brand trademarks
Trademark protection is probably not the first thing on your mind when there is a brand identity design project on top of your to-do list. Although from a legal perspective it should be, your design perspective may well span hundreds of symbols, shapes, images, letterforms, color studies, and a myriad more visual and verbal elements. It’s a lot to think about. But keeping a little legal knowledge in mind while you consider how three of those elements—the brand symbol,word mark, and combination mark—work together will make your ultimate job—delivering a protected trademark and valuable corporate asset to your client—easier.
Let’s first be clear on our definitions of these identity elements.There is certainly room for variation in the terms that designers use to describe brand identity elements. As Michael Beirut points out however, “the distinction . . . matters when you are in a situation where you need to refer to these overall identity elements precisely.” Since that is certainly the case when we are talking about legal concepts, here we go.
A symbol is a visual form that expresses an organization, product, or service’s essence. It’s not the same thing as an icon or pictogram, both of which I would define as graphic forms for particular applications. And since it’s not a verbal form, it’s also not a wordmark, which is a typographic representation of a company’s name. Used together, these elements create a brand configuration. The combination of symbol and word mark can be permanently integrated together or set up as a configuration (a “combined mark,” sometimes referred to less elegantly as a “lock up”) of the symbol adjacent to, above, or below the wordmark. Both the permanently integrated mark and the combined mark are represent what I mean by a logo.
Trademark protection/brand perception advantages
From both the legal and design perspectives, the combined mark is the most useful brand identity element for the start up or smaller company. The reason is that it’s generally easier to comprehensively search and clear then either a text logo word mark or an integrated text/symbol combination. It’s a fairly simple process to identify words of potential trademark concern. The process, however, becomes more difficult when words are integrated with symbols, color combinations, or lettering style.
A design search can readily identify a standalone symbol. But a wordless trademark is of little value without significant spending on brand advertising to establish its meaning. As Sagi Haviv explains, “visual identities work through familiarity, so any new visual element has to be learned first in order to be established. Using a symbol or wordmark means that there is an additional element that has to be learned. We find that people are generally willing to learn as little as possible.” While such a mark may be an appropriate choice for a truly international brand, it’s a poor design recommendation for a startup or emerging company.
A combination mark reduces the risk of either a symbol or word mark infringing another trademark. Because of the way the U.S. Patent and Trademark office (“USPTO”) views combined marks, it also enhances the ability to prevent someone else’s infringement. The USPTO considers the words, the symbol, and the combination as distinct, registrable elements even if they appear only together. If someone later attempts to register a mark that is confusingly similar to either the visual or verbal element, the USPTO may refuse to register that mark. And if an individual element is registered, the combined mark may still allow the trademark owner to challenge it as likely to cause confusion.
The trademark protection afforded the combined mark should also enable more confident use of the standalone symbol eventually. Once there is a strong association between the symbol and the source of the goods or services it represents, a symbol like the Nike swoosh can come to stand in the marketplace by itself. As Robert Goldman and Stephen Papson recount in their book, Nike Culture: The Sign of the Swoosh, for example, the company’s transition to the stand-alone symbol was unplanned. Only after the company unexpectedly received numerous customer inquiries seeking to buy caps without verbal identification after tennis star Andre Agassi sported one during a televised tournament did it elevate the swoosh to iconic status.
Trademark legal counsel for design firms
Keeping a legal perspective on trademarks in mind at the early stages of brand identity design can lead to stronger work at lesser cost. Contact the firm for an attorney consultation to learn more at no cost to you.