There is no one-size-fits-all to a branding budget. They will vary by the size of the company and overall marketing strategy. But for anyone investigating what an appropriate branding budget is, here are the guideposts identified by the authors of Branding for Dummies, 2d Edition:
Task Low-End High End
Name Development $10,000 $75,000
Logo Creation $3,500 $150,000
Advertising $10,000 Millions annually
Website/Marketing materials $10,000 $250,000+
Signage, vehicles, packaging $20,000 $250,000+ annually
What is interesting about the guideposts is that there is no line item for “Trademark Clearance.” Assuming you spent the low-end of the range, that means a company will spend about $53,500 to develop a new brand and create the material necessary to let customers know about it.
BOB conducts a thorough, single-name trademark search for $49.99. That is less than 1% of the low-end, average branding budget. The decision could not be more clear to have a proper trademark search conducted before investing money in building a new brand. And BOB is the lowest cost option for a proper trademark search in the market.
Believe it or not, there is a method to the madness when it comes to conducting a trademark search. The goal is to identify warning signals that may require more investigation to determine if one of the identified marks in a search is in fact a knockout.
This starts with looking for the identical mark for the identical goods or services. If a mark is found in this first pass, the search is probably done. If no mark is found, then the next step is to look for parts of the mark with an identical goods or services description. Breaking up a mark may be as simple as separating its elements or as advanced as using truncation symbols and other operators. If no marks are found using the second wave of search conditions, then the next step is to repeat the process using goods and services that have been found to be related to the goods and services intended for the proposed mark.
It is only after following this hierarchy that a searcher can claim to have conducted a thorough trademark search, and it is this hierarchy that BOB follows to conduct its searches.
There are free, and some paid, trademark search software applications that do not consider multiple aspects of the proposed mark. Instead, they focus only on the identical mark and search the USPTO database for only identical marks. Results from these types of searches are superficial and only scrape the surface of what a trademark search should be.
BOB goes deeper when searching proposed marks. It gives the user the option to break up the mark to include in the search the parts of a mark along with the entire proposed mark, which is the right thing to do.
Watch the following video to see how BOB gives users the option to break up a mark as part of a search – the Component Search.
On October 12th, Fuzic, Inc. announced it was rebranding to Vibenomics, Inc. Scott McCorkle, Executive Chairman of Fuzic, said that part of the motivation for the rebrand was to “avoid potential trademark issues.” Fuzic, Inc. had not federally registered the mark FUZIC, nor has Vibenomics, Inc. applied to federally register the mark VIBENOMICS. If you asked BOB, FUZIC did not appear to present any trademark concerns and VIBENOMICS appears to be available to be registered as well. A quick Internet search also does not appear to reveal any issues with FUZIC. It could be that Mr. McCorkle saw an issue with FUZIC that was unrelated to a dispute based on another party as the reason for the rebrand. But Vibenomics would be wise to invest the money in filing a federal trademark application for its new mark.
Searching the United States Patent and Trademark Office for a conflicting mark is a must for every business because of the nationwide priority given to federally registered marks. A business does not want to be in a position of having to rebrand years down the road because it did not search the USPTO before investing in a brand. Searching beyond this and to what extent really depends on the business and industry in the business is in.
If the business operates in a saturated market, like the restaurant or craft beer industries, then conducting a comprehensive search for common law (i.e., unregistered) trademarks may be important provided the business aspires to expand throughout the nation. If the business does not aspire to expand, then an Internet search for an identical mark may be sufficient.
However, if a business does not operate in a saturated market, a comprehensive search may not be necessary. More likely than not, the business will know who its competitors are and what marks are already out there. An Internet search may be sufficient in this scenario.
It is important even at the early, search stage to not lose sight of the business objectives with adopting and registering a trademark.
The fifth statutory exception prohibits the registration of matter that is merely descriptive or deceptively misdescriptive of the goods or services for which the mark is used. A mark may be descriptive because it relates to the nature or quality of the goods or services. A mark may also be descriptive because it describes a geographical connotation or is a geographical name or term that is not obscure. Finally, a mark may be descriptive if it describes a person (i.e., the mark is primarily a surname). Given names, however, do not suffer from this defect. For example, JOE’S CRAB SHACK is not merely descriptive of restaurant services.
A mark is merely descriptive only if it immediately conveys an idea of the ingredients, qualities or characteristics of the goods or services. This is a high standard but the line between marks that are suggestive and immediately registrable from those that are merely descriptive is often a fine one. The most popular test with courts for determining whether a term suggestive is the “imagination” test. Under the imagination test, a term is suggestive if it requires thought or perception for the purchasing public to reach a conclusion as to the exact nature of the goods or services. If the mental leap between the word and the attributes of the product or service is not almost instantaneous, this strongly indicates suggestiveness, not mere descriptiveness.
It is important to keep this unprotectable categories in mind when creating subject matter to function as a trademark or service mark. Equally important during the creative process is an understanding of the spectrum of distinctiveness and the several degrees of distinctiveness a potential mark possesses. The varying degrees of distinctiveness are measured on a spectrum or sliding scale called “the spectrum of distinctiveness.” The spectrum of distinctiveness includes the five categories of marks: (A) generic; (B) descriptive; (C) suggestive; (D) arbitrary; and (E) fanciful.
While a likelihood of confusion is the primary consideration of a trademark search, descriptiveness should also be considered because a descriptive mark may take as along as five years to acquire any trademark rights.
The Lanham Act very broadly defines a trademark as “any word, name, symbol, or device, or any combination thereof” that identifies goods or services, distinguishes them from those of others, and indicates the source of the goods or services. If these three critical elements are present, the possible subject matter available for trademarks is virtually unlimited. Indeed, single colors (UPS brown delivery trucks), product shapes (ZOVIRAX® tablets) and configurations (Apple® iMac® computer), product containers (HEINZ® ketchup bottle) and packaging (TOOTSIE ROLL® wrapper), vehicles (Porsche® 911® automobile), clothing (Dallas Cowboys® cheerleading uniforms), building exteriors (White Castle® restaurant) and interiors (Taco Cabana® restaurant), sounds (NBC® chimes), fragrances (cherry-scented motor oil), and other attention-getting devices are all protectable as non-traditional trademarks.
If you are considering a traditional trademark, it is settled law that the literal portions of a mark are more memorable than any non-literal matter accompanying the literal terms. Accordingly, you want to focus a preliminary search on the literal portion of the mark. Design components should be a secondary consideration to either support the conclusion that a proposed mark is not available or, in the case of a diluted mark, support the finding that the design component may be sufficient to distinguish the marks.
Dilution is an important concept when conducting a trademark search. When a mark or term revealed in the search results is diluted, small differences in a proposed mark may be sufficient to avoid a likelihood of confusion. But dilution cannot be accurately evaluated unless you first accurately evaluate the relatedness of the goods or services. Like other likelihood of confusion factors, similarity of the mark, relatedness of the goods and services, and strength directly impact each other. And dilution only occurs when multiple marks sharing a common element in connection with related goods and services peacefully co-exist with each other on the Principal Register of the Trademark Office.
Because BOB includes the relatedness of goods and services factor, it also accurately evaluates the presence of dilution in the search results.
The case law is clear and settled that classification “is wholly irrelevant” to a likelihood of confusion claim. See, e.g., Jean Patou, Inc. v. Theon, Inc., 29 U.S.P.Q.2d 1771, 1774 (Fed. Cir. 1993). Nevertheless, there is far too much emphasis placed on searching the right International Classes than on finding goods or services that may be related to the goods or services intended to be offered in connection with a proposed mark. The Nice Classification system is merely a way for Trademark Offices to organize the thousands of applications that are filed each year. So why is the system relied on as a way for evaluating potential conflicts between marks?
For one, old habits die hard. DIY Searchers have been using the International Class System in their evaluations for years and it presents itself as a shortcut to evaluating the relatedness of goods factor. After all, the system does not randomly categorize goods or services together. But that does not mean that all goods in a particular class number are legally related.
To evaluate the relatedness of goods factor requires legal research to determine what goods and services have been found to be legally related to one another. Although DIY Searchers have access to some legal databases for free – TTAB’s e-FOIA page and Justia, it is time consuming to conduct this research. Considering the similarity of the marks and the International Classes only is not a thorough trademark search and can result in a costly mistake. In commenting on the recent settlement with Gorilla Glue Co., Ross Johnson, founder of GG Strains, said the lawsuit and rebranding efforts costs the company $250,000.
BOB provides a thorough search by considering not only the similarity of the marks factor, but also relatedness of the goods or services and dilution.