All Brands are Trademarks, But Not All Trademarks are Brands

"brands trademarks"

What comes first the trademarks or the brands? These words are not synonymous, and understanding the difference is important. Vocabulary in general is critically important to understanding new topics and being able to converse intelligently about them.

The Federal Trademark Act defines what constitutes a trademark very broadly. “A ‘trademark‘ includes any word, name, symbol, or device, or any combination thereof – used by a person – to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods, even if that source if unknown.”

Traditionally, a trademark is thought of as words and designs, but it can include smells, tastes, colors, shapes, touch, and sounds. What determines if any of this matter can function as a trademark is whether consumers rely on it when making purchasing decisions. Consumers come to rely on any matter when making purchasing decisions by having experiences with the matter. Those experiences can be good or bad, but those experiences are embodied in the trademark and the trademark starts to represent and stand for those collective experiences. The collective experiences embodied in a trademark is referred to as the goodwill associated with the trademark.

When someone mentions the word brand they are referring to “the sum total fo the thoughts, opinions, associations, and experiences people have with your company.” Brand is more synonymous with goodwill than it is the word trademark. And because a brand requires consumer experiences, all brands are trademarks but not all trademarks are brands.

A company can do a lot to influence the experiences consumers have with the trademark. For example, you can have attractive packaging and marketing collateral, and have excellent customer service. All these things positively reflect on the company and create a quality expectation by consumers every time they encounter the trademark. When this expectation is created, you then have a brand.

The path from trademark to brand depends in part from the selection of your starting point. Select matter that consumers immediately recognize as a trademark, and your path will be shorter than if you select matter that takes time for consumers to recognize is a trademark in the first place.

Parody of Music Names in Branding

"picture of a music concert representing trademark parody"

Parody is something that seeps into the branding process from time to time. Depending on the good or service, parody of a recognizable music name could be appropriate. Esquire magazine highlighted the ten most memorable music parody brands. Our favorite was DON A HENLEY AND TAKE IT EASY for clothing.

In trademark law, there is nothing illegal about drawing inspiration from something for a name. Where the line is crossed is when the manifestation of that inspiration is likely to cause confusion with another party’s trademark. The Trademark Trial and Appeal Board has found on multiple occasions that the right of the public to use words in the English language in a humorous and parodic manner does not extend to use of such words as trademarks if such use is likely to cause confusion.

What this presumes is that the music name functions as a trademark in the first place, and trademarks cannot exist in a vacuum. Trademarks must attach to a good or service. In the case of music names that most likely means that the band or musician name attaches to primarily entertaining services. This is significant because trademark rights are limited to the goods or services they are used in connection with plus what would be considered a natural zone of expansion.

Unfortunately for DJ Khaled, that means his trademark infringement complaint filed against Curtis Bordenave and Business Moves Consulting Inc. d/b/a Business Consulting over trademark applications filed for DJ Khaled’s 18-month old son’s name ASAHD, ASAHD COUTURE, and A.S.A.H.D. A SON AND HIS DAD for clothing and magazine publishing services will likely fail. DJ Khaled named his son an acronym A.S.A.H.D., which means A SON AND HIS DAD.

This acronym has not been used with any goods or services, so there are no trademark rights associated with the acronym. Moreover, whatever notoriety DJ Khaled has in his name, that does not transfer to his son’s name. What his case demonstrates is that you need to know thy enemy when you select a name, which we have to assume the defendants fully anticipated in this case.