Getting Creative with Protecting Creativity: Protecting a Consumer Brand with More Than Just Trademarks

Trademarks are an effective way to protect valuable intellectual property assets and promote a brand—but they are not the only way. Brands are carefully cultivated and enormously valuable, and those seeking to protect them should consider the larger universe of intellectual property protections. In some cases, other forms of intellectual property, like copyrights, trade dress, and patents, both design and utility, may provide better protection for a brand than trademarks alone. And a thoughtful combination of multiple forms of intellectual property protection may ultimately be the best way to preserve and protect growing or established brands.

To be clear, trademarks are a critical part of any brand’s toolbox. A federally registered trademark provides protection for a vast array of brand-identifying marks, whether they be a “word, name, symbol, or device, or any combination thereof.” A registered trademark grants the trademark owner the exclusive right to use the mark nationwide within specific commercial contexts.

That said, trademarks (like all forms of intellectual property) have limits. Three that may impact brand owners are trademarks’ limitation on commercial contexts; their use requirements; and their variance in strength.

Because trademarks are granted only in connection with certain goods and services, brand owners need to carefully consider all the ways they intend to use a trademark. If, when applying for a trademark, the applicant under-designates the commercial contexts in which the trademark will be used, there is a risk of not being able to enforce it in a context actually used. Consider, for example, a company that primarily sells cosmetics products. If that company applies for trademark protection only regarding cosmetics, it will have difficulty enforcing that mark against those who create clothing or other merchandise using the mark. On the other hand, over-designating the commercial contexts in which the mark will be used has its own pitfalls—doing so can lead to the U.S. Patent & Trademark Office rejecting registration of the mark.

Unlike other forms of intellectual property, trademarks must be used to prevent them from being abandoned. If the owner abandons the mark (intentionally or otherwise), others may enter the same marketplace, using the same mark, without being liable for trademark infringement. And trademarks can vary in strength. Arbitrary, “fanciful” trademarks tend to be more distinctive and enforceable in litigation. Marks which are merely descriptive—think “Deep-Dish Pizza”—or generic marks—e.g., “Makeup Store”—tend to be less distinctive and thus less powerful.

While centrally useful to brand cultivation, perception, and protection, some shortcomings in the trademark regime may provide opportunities for other forms of intellectual property to step in. Brand owners and managers should carefully consider whether their brand could be augmented by the thoughtful use of other forms of intellectual property protection.

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