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25 January 2021
The COVID-19 pandemic continues to highlight the importance of online brand protection. This article outlines strategies that non-profits should consider when working to maximise brand value, conduct a successful rebrand or monitor the use of copyrighted materials.
Several components contribute to a brand's value, including distinctiveness, availability and exclusivity. These components – together with registration, control and business performance – create a brand's strength. However, at its core, a brand's value often relies on the ability to register and control the trademark. Since the pandemic started, some new trends have emerged among non-profits looking to maximise their brand value. Non-profits are seeking cost-saving opportunities by moving faster to jettison underperforming brands and taking more care to protect their high-performing brands by ensuring that their registration and licensing are up to date and correct. Further, non-profits are still trying to carve out more space in the market in this difficult period by moving forward with rebranding, creating new brands and focusing more on distinctiveness and exclusivity in brand selection. Risk tolerance among non-profits does not appear to have changed significantly, despite the high cost of trademark litigation.
When looking at brand distinctiveness, there is a continuum to be considered that ranges from generic or descriptive to suggestive, arbitrary and fanciful, with generic marks offering the weakest protections and fanciful the strongest. Fanciful or coined marks which use made-up terms with no meaning or translation are uncommon for non-profits, even though they offer the broadest protections. Arbitrary marks that use dictionary words and acronyms or suggestive marks that require a moment of conscious reflection offer narrower protections but are more common for non-profits. Meanwhile, descriptive and generic marks offer little or no protection. In general, and particularly in the post-COVID-19 environment, non-profits should avoid generic or descriptive marks and instead try to secure trademarks that are high on the distinctiveness continuum so that their brand has the strongest possible protection.
As rebranding (which can include a brand overhaul or the creation of a new brand) becomes more common, certain approaches have proved successful. In general, there has been a move towards modernising old trademarks by incorporating more colour and warmth into logos and other branded materials. Some brands are also moving away from difficult acronyms in favour of slogans. However, in order to ensure a successful rebranding exercise, it is critical to allow for sufficient time to move through the various steps. These include:
Applicants should be aware that it can take considerable time to get through each stage. Non-profits engaged in rebranding should also consider the points discussed below.
Non-profits should search and register key marks in key countries where they offer key goods and services. When doing so, it is important to research how the brand name will translate into other languages – not just the literal translation of the words but also their connotation in other cultures. Also, it is worth examining how the characters in the logo might be interpreted in countries using different alphabets.
Beware of infringers
Any organisation that has a global footprint may be susceptible to a web of infringers, which could seem like separate entities or individuals but which are working together to steal the rights of a legitimate brand. Non-profits must bear this in mind when looking to clear a trademark internationally.
Rebranding the field
In some cases, a non-profit or other organisation engaged in rebranding may have to look beyond just changing their own name or logo. In such instances, the rebrand will not only have to portray how the particular organisation has changed or grown but may also have to articulate how the profession or field has grown or matured.
Licensing for trademarks
It is important to have licensing in place not just for the main trademark owner but also for any third-party entities that are using the brand (eg, several different organisations may operate under the same non-profit umbrella). Quality control is also essential as failure to license correctly can result in abandonment or naked licensing. In other words, the organisation could risk losing trademark rights altogether.
Keeping legacy marks alive
Following a rebrand, it may be worth keeping old logos and other legacy marks visible on websites and other branding materials to help customers recognise the brand and understand the purpose behind the rebrand. Keeping these legacy marks alive also serves to protect them from misuse and helps to bridge the gap between the old brand and the new. From a trademark law point of view, it can also be advisable to keep certain strategic registrations alive for legacy brands for a period in order to preserve 'residual goodwill'.
Any content that an organisation displays or distributes has always needed to be appropriately cleared to avoid exposure. However, with so much content now online, it is more important than ever to secure clearances because the likelihood that the infringement will be discovered is much higher. For instance, in recent years many photographers have increased their enforcement as it has become easier for them to discover copyright violations in online and digital formats. The mere fact that an image is available online or posted on social media does not make it part of the public domain and free to use. Similarly, music must be licensed for use in virtual events, just as it would be for in-person events. However, licensing music in a digital environment is rife with complications, often involving varying rights, multiple copyright owners and several different types of licence. As any unauthorised use in online formats is likely to be detected, concerned parties should seek legal advice on obtaining the correct clearances.(1)
For further information on this topic please contact Andrew D Price or Meaghan Kent at Venable LLP by telephone (+1 410 244 7400) or email (email@example.com or firstname.lastname@example.org). The Venable LLP website can be accessed at www.venable.com.
(1) For more information please see the webinar 'Maximising the Value of Brands and Creative Works in Challenging Times', available here.
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