How to Legally Protect Your Brand

Hello, my dear readers! It feels like forever since we last got together, no?

When we last connected, some of us were crawled up in a ball, nursing paper cut wounds from pages of pre-Las Vegas paperwork; others were doing body shots of Four Loko to stay awake through pre-Vegas prep; all of us were eager for a magnificent Vegas jewelry week.

So how was Vegas for you? Tell me!

For me, it was an enchanting celebration of our industry: from the delightful banter and seduction I encountered with Sergio Antonini and his masterful balance of intimate and bold
gioielli italiani — to my connection with the Turkish ring master himself, Gurhan, which lead to a post-Vegas Atelier visit, where he and his wife, Fiona, kept me spellbound for hours with their love story — and to every exquisite meeting in between.

I experienced thrilling! Thought provoking! Subdued elegance! Kingly opulence! And that’s just from the conversations I had!

Which brings us back to this column.

As I navigated the floors of Couture and JCK, I heard firsthand your challenges with marketing and promoting yourself in this industry. This column has always existed to help you with just that, and I’m honored by all of you who welcomed me into your booths and shared your stories.

For the next few months, this column will be about your challenges. The stories will remain mostly anonymous, sharing only names for those who would benefit from being highlighted. All others, your secret is safe with me!

If I didn’t meet you in Vegas, you are always welcomed to email me your pressing PR questions, and I will address them in a future column.

Now, let’s begin!

Dear Lilian,

My brand has been around for almost two decades, and in all of that time, I’ve used the same tagline. Recently, a very well-known fashion brand has begun using my tagline in their recent campaign. What can I do to legally protect my brand?

Signed,
Imitation IS NOT the Sincerest Form of Flattery

My dear Imitation,

It’s a shame when titans of industry flaunt their army of lawyers to keep smaller brands intimidated. But good news for you: your particular Goliath has faced a David in the past – and lost! Given how much I’ve loved your work since we first met at Couture in 2009, I’m happy to offer you some rocks to throw so you can legally protect your brand!

Although my youthful ambitions were towards becoming a lawyer, alas, my life took a different path – one that’s brought me here to point you in the right direction for finding justice.

That direction is to attorney and National Jeweler friend, Joy Butler. This is what she had to say when I told her what’s going on:

Trademark Attorney’s Recommendations to Legally Protect Your Brand

“Her issue is a trademark or unfair competition issue, not a copyright issue. Briefly, copyright law protects original creative material such as books, films, visual art, and even magazine columns. Trademark law protects one’s exclusive use of an identifier (e.g., branding) for the source of a specific product or service. The trademark-protected identifier can be a word, phrase, design, shape, color, – and, yes, a tagline.

To determine whether someone’s use of a similar or identical trademark violates your trademark and whether legal action is warranted, consider the following:

1) Are you actually using your “identifier” in a manner that qualifies for trademark protection?

This requires using the trademark in commerce, in connection with offering for sale the business’ good or service. It’s not sufficient to use the company name, logo, or tagline on company letterhead or business cards. The aforementioned must also appear on the product or the product’s packaging. If the trademark is used with a service, the trademark must appear with advertising for the service.

2) If you have trademark rights, have they actually been infringed?

Just because a business owner has trademark rights, those rights do not absolutely prohibit anyone else from using the same name, logo, or tagline. You can prevent others from using your trademarks only if the other use is confusing. Your exact trademark can be used on substantially different products or in a substantially different industry. That’s why Delta Airlines can co-exist with Delta Faucets and Outback Cars can co-exist with Outback Steakhouse.

3) Have you registered your trademark?

Registration is not a pre-requisite for valid trademark rights — you instantly develop trademark rights by being the first to use the trademark in commerce in a particular geographic region. Nevertheless, federal registration of the trademark with the United States Trademark Office does provide you with a number of additional benefits, including nationwide exclusivity, increased powers to enforce your trademark rights, and eligibility to receive higher damage awards from the infringer with a successful trademark infringement lawsuit.”

Without existing already as your attorney, dear Imitation, Joy isn’t able to make a definitive recommendation. She did add, however, that if your answer is yes to all three questions, you can potentially halt the Goliath’s actions with a cease and desist letter, and, of course, filing a lawsuit.

Check out Joy’s book, The Cyber Citizen’s Guide Through the Legal Jungle: Internet Law for Your Professional Online Presence, which includes guidelines for determining your trademark rights and fully annotated examples of completed trademark registration applications.

Keep me posted on your fight, my dear. I want to toast with you when you win!

Until next month, faithful readers!