Fish's Kristen McCallion, Catherine Stockell and Cindy Walden Quoted in World Trademark Review article, "Brand creation and protection: a multifaceted approach"

This article first appeared in World Trademark Review magazine issue 66, published by Globe Business Media Group. To view the issue in full, please go to www.worldtrademarkreview.com.

Practitioners from China, Germany and the United States discuss how to manage the brand lifecycle, exploring how counsel can ensure robust, innovative and effective creation and protection strategies.

While the creation and management process is where much of a brand's real value comes from, subsequent protection strategies ensure that, once established, brands are not destroyed by infringers seeking to capitalise on their goodwill.

With this in mind, World Trademark Review assembled a panel of industry experts from key jurisdictions - Johnson Li and Justin Jiang of China Patent Agent in China; Christian Thomas of Kuhnen & Wacker in Germany; and Kristen McCallion, Catherine Stockell and Cynthia Walden of Fish & Richardson in the United States - to examine the role of trademark counsel in the creative process, consider techniques to promote internal awareness of trademark law and explore practical strategies to enhance brand protection in different media and markets.

From a legal perspective, what are the various aspects of a brand that need to be considered in terms of securing protection and are there any restrictions on the types of right that can be registered?

Cynthia Walden (CW): The term 'brand' is often used synonymously with the term 'trademark', but a brand also incorporates a reputational and emotional component tied to the feelings and associations which consumers have about a company and its products and services. Brands are created and cultivated through consumer experience with the underlying products and services in the marketplace and a company's brands are among its most valuable assets. First and foremost, though, a brand is anchored around a trademark.

Trademarks can comprise a word, design, symbol or combination thereof which is used to identify products and services and signify their source and quality. A trademark can be a slogan (eg, Nike's "Just do it!"), a colour (eg, brown for UPS or magenta for T-Mobile), product packaging or product configuration(eg, the shape of the Coca-Cola bottle or the wrapper on a Tootsie roll) or the distinctive lay-out of a store or restaurant(eg, the Apple store or a McDonald's restaurant), and can even extend to sound marks (eg, the roar of the MGM lion) and scent marks. All of these marks can be registered with the US Patent and Trademark Office; although descriptive terms, product packaging, product configuration, colour marks, sound marks and scent marks all require a showing of acquired distinctiveness in order to qualify for registration.

In some organisations it can be hard to get stakeholders to understand the contribution that trademark counsel can make to the brand creation process. How can counsel best state their case and position themselves as creative partners rather than roadblocks to creativity?

Catherine Stockell (CS): Collaboration is key to this effort. In order to transition from a roadblock to a trusted partner, it is imperative for trademark counsel to understand their clients' business, to listen to the branding goals of the marketing department, to explain issues from a brand protection perspective and to proactively offer alternative means of accomplishing the branding goals - in other words, work in collaboration with the marketing department. When assessing the availability of a proposed new mark, discuss the issues in terms that are most important to marketing - for example, is the mark available for use irrespective of registration, is it available for registration and is it protectable?

If the answer to any of these questions is no, suggest alternative variations which may address the concerns raised. Even if marketing does not accept your suggestions, it will start the ball rolling on productive discussions as to how it can successfully reach its branding goals in a manner which trademark counsel can defend and protect for years to come.

How important is an internal trademark usage manual and what key elements should it include?

Kristen McCallion (KM): I would argue that a trademark use manual is an important tool to have for every type of company - large and small. It promotes consistency in how the company's trademarks are used and displayed to consumers, and ensures proper use of trademarks by marketing and business executives. A manual can range from just a few pages to 100. It should clearly set forth rules for creating a unified, consistent and identifiable presence for the company's brand names, taglines and logos. Some of the key elements include advising readers of:

• the proper colour, size and placement of logos when used on brochures, emails, letterheads, advertising and websites;
• the proper font or typeface for any stylised word mark or logo design; and
• the precise colour palette of corporate branding, which often includes a reference to the proper Pantone colours and their allocated numbers.

Once a brand identity is chosen and protection is in place, attention turns to building identity. One way to do this is through advertising. What constitutes misleading or deceptive advertising in your jurisdiction?

CW: In the United States, advertising is considered false or misleading if it contains the use of any word, term, name, symbol or device or any combination thereof, or any false description of origin or false or misleading description or representation of fact which misrepresents the nature, characteristics, qualities or geographic origin of goods, services or commercial activities. Advertising can be misleading if it is deceptive or if it has the tendency to deceive, even if it is literally true. Determining whether an ad is misleading or deceptive depends on how it is perceived by a substantial portion of prospective purchasers. Surveys are the most common method for measuring whether advertising is misleading or deceptive. Brand owners should take care to ensure that all claims made in advertising are truthful and can be substantiated. If photographs of the product are used, they should depict the actual product as a consumer would experience it. If comparative claims are made regarding another company's products or services, these should be independently verified. Anyone who may be damaged by false or misleading advertising can pursue an action in federal court under the Lanham Act. The Federal Trade Commission (FTC) is also empowered to take action against unfair or deceptive advertising that involves health or safety claims or might result in economic injury.

Native advertising is a relatively new phenomenon. Who regulates this and what restrictions are in place?

CW: 'Native advertising' refers to digital advertising which appears to be embedded or assimilated into the surrounding content (eg, news, featured articles, product reviews, infographics, computer games, emails, entertainment or other material) in such a way that it is not readily recognisable as paid advertising. The FTC regulates native advertising under its authority to combat deceptive and unfair practices, and has issued an Enforcement Policy Statement on Deceptively Formatted Advertisements which provides guidance on how to ensure that advertising is truthful and not misleading. For those who engage in native advertising, the key point to remember is that it must be clear that the content is recognisable as advertising and not editorial content. The FTC recommends including clear and prominent disclosure of advertising content to avoid any risk of deception.

Social media is equally important; yet there are many pitfalls in this environment. What strategies should be put in place to monitor brand-related activity and discussion - both by internal staff and in the wider environment?

KM: Setting up and enforcing social media guidelines is certainly a good idea. Effective guidelines include a variety of rules and practice pointers, which include both legal advice (eg, do not copy content from third parties) and practical advice (eg, pause before posting and use your best judgement).

A recent phenomenon is cease and desist letters going viral online, causing headaches for those tasked with protecting brands. To what degree should this be taken into account when considering action and what is the best response when letters go viral?

KM: It should very much be taken into account. Before firing off a cease and desist letter, it is important to consider the real-world effects of an overly aggressive letter going viral, which can quickly have a negative impact on the sender's image. The best step is to try to prevent this from occurring. Toning down the language in a letter and taking the time to communicate - in plain English – the business's concerns can go a long way towards communicating the matter effectively and achieving the desired result. If you are faced with a negative viral campaign, act fast to acknowledge it and do not avoid it or let it simmer - this will simply inflame the issue. Also, be transparent. A public explanation of why the letter was sent is often received positively and will quickly undermine the negative reaction.

Licensing offers a quick - and potentially lucrative - route to expansion and brand building. When entering into partnerships, what are the key legal considerations for trademark counsel?

CS: If carried out properly, licensing is a terrific means of expanding the reach, recognition and fame of a brand. However, it is important to control brand expansion in a way that protects the brand's core values. As such, before engaging in a licensing programme, establish a business plan which articulates your licensing goals. Also bear in mind that you are entering into a business relationship with this entity, so be sure that the licensee shares your business values, and that the proposed products or services
are natural extensions of the original brand and compatible from a consumer perspective (eg, rum spirits and rum cakes). Aside from the definition of the licensed goods or services, the key terms in any licence agreement are exclusivity, royalty, term, termination, geographic scope, ownership and, especially in the United States, quality control. In the United States, the absence of quality control provisions can be fatal to a licence agreement and, in extreme cases, to the brand itself. Further, aside from legal considerations, quality control is a necessary element in any trademark licence from the business perspective of safeguarding the original brand's reputation.

Another market strategy is to launch co-branded products in association with third-party brands. What are the main contractual considerations when entering into such relationships?

CW: While co-branded products can be an excellent way of expanding business and creating new revenue opportunities, unless the agreement governing the co-branding arrangement is carefully written, co-branding can also present a real risk to a brand's value. To ensure the best outcome, co-branding agreements should include clear provisions which confirm:

• ownership and control over the use of the underlying brands;
• the scope of permitted use of the parties' respective brands;
• obligations to provide each other with the opportunity to review and approve promotional materials and to ensure the quality of the co-branded products;
• the duration of the agreement;
• the geographic scope of the agreement;
• termination provisions which specify when and how the agreement may be terminated and what happens to remaining co-branded products in this event;
• the financial terms of the agreement;
• an agreement to cooperate in enforcement efforts;
• warranty and indemnification provisions; and
• that the agreement may not be transferred or assigned without the written consent of the other party.

Finally, brands evolve over time and some marks may be used short term as part of the wider brand-building effort. What issues need to be considered when deciding whether to maintain marks which are not currently in use?

KM: In the United States, a mark must be used in commerce in order to obtain and renew a federal trademark registration. Generally speaking, with goods, this means that the mark is used on or in close connection to a product which is shipped across state lines - although there are additional ways for a trademark to be used in commerce. One important issue to consider when deciding whether to maintain a mark which is not currently in use is whether there is any basis for maintaining it before the USPTO. A representation to the USPTO that a mark is used in commerce when it is not could constitute fraud, rendering the registration vulnerable to cancellation.

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