In today’s episode, we discuss the best way to protect yourself: through patenting and trademarking. These are tools to help you defend your intellectual property and make sure your brand is sending clear signals in the market.
The differences between patenting, copyright, and trademarking
Whether patenting and/or trademarking is right for you
What trademarks and patents can and can’t protect in your business
Lessons in using trademarks and patents to differentiate your brand from Coca-Cola
Full Podcast Transcript
Patenting and Trademarking
Hello Beings of Earth! I’m your host Neil Verma.
Welcome to eBrandCast, where we decode what branding truly is, so you can build a dominant eCom Brand.
Today, we’ll be discussing patenting and trademarking.
In 1912, leadership at Coca-Cola realized they had a problem.
They were worried about the public’s tendency to go into a store and order a “Coke,” instead of a Coca-Cola.
Although the nickname had been around for more than a decade, the alarming rate at which it was overtaking the use of the full brand name was setting off alarm bells.
Coca-Cola didn’t mind the nickname as a term of endearment, but the infectious nature of the term Coke had them worried it would become a genericized term for any soda.
They didn’t want their brand identity to be diluted, so in 1913 they launched an ad campaign to try and curb its use.
The ads featured the tagline, “Coca-Cola, ask for it by its full name, then you will get the genuine.”
And for the next 30 years, Coca-Cola continued to dissuade the use of “Coke,” before they realized it was time to give up.
They realized they were spending a lot of money fighting a losing battle, and if they waited too long, another cola company could trademark the name from under them.
They decided to embrace the nickname, but they had to carefully fold it into their brand identity before they’d be able to secure legal protection from a trademark.
So they tried another marketing campaign.
This time, they created Sprite Boy, a cartoon character that looked like an elf and had a bottle cap for a hat.
Sprite Boy – no relation to the drink, which was released many years after Sprite Boy’s retirement – could be found in print ads.
Usually peeking out from behind a bottle with a little speech bubble that would read “Hello, I’m Coca-Cola, known too, as Coke.”
Other ads included a P.S. at the bottom that clarified “Coke” was the “friendly abbreviation” of Coca-Cola.
In 1945, Coca-Cola officially trademarked “Coke,” though it wasn’t featured in a campaign until 1948, in an ad that declared “Where there’s Coke, there’s hospitality.”
A lot has changed since 1912, but not when it comes to branding.
You might not be Coca-Cola, but you’re going to face many of the same problems they did, including the need to protect your brand identity.
Because your brand clarifies what’s unique about your business and is how consumers distinguish you from competitors in the marketplace.
Unfortunately, competition isn’t always healthy, and although the branding process differentiates your brand, you can’t rely on good faith when it comes to competitors.
As eCommerce competition gets more intense every year, more and more merchants are resorting to ethically bankrupt practices in order to get ahead.
Compared to traditional retail, without a physical location and in-store employees, and stock to manage, eCommerce is certainly more agile, but it comes at a price.
It means that nearly everything your brand owns is intellectual property.
This presents several unique challenges.
No retailer in their right mind would set up shop next door to a well-known local store, sell the same products, imitate their store’s layout,
and even post the same signage complete with the other business’s name and logo.
But this happens online every day.
Counterfeiters routinely target small online stores to duplicate.
From the business model, right down to the products, and logo, in an attempt to siphon traffic and sales to make a quick buck.
Likewise, in 2016, the World Intellectual Property Organization reported that instances of cyber-squatting are on the rise.
This is when people buy-up and hoard domains, which include the names of existing businesses, in the hopes of selling these domains back to the business at a profit.
And if you’ve been selling on Amazon for any amount of time, I certainly don’t need to tell you that protecting your business from bad faith competitors online can be fraught with headaches.
Because most of your business assets online are intellectual property, it means they’re accessible to anyone with an internet connection.
Which only makes these kinds of tactics easier than they would be with a traditional retailer.
Although they are necessary for all businesses, protecting your brand with trademarking and patents online is critical.
Because databases of registered trademarks are widely, and publicly available, counterfeiters are much more likely to target businesses without trademarks.
Trademarking isn’t a cure-all, but it can be a powerful deterrent to copycats out for quick profits.
Since they’re likely not willing to take an additional legal risk.
If your brand is still the victim of counterfeiting, having registered trademarks gives you the tools to actively protect your business.
Trademarking also makes it possible to sue cyber-squatters, and prevent them from holding domain names with your brand name hostage.
More importantly, trademarking and patenting allows you to protect and manage your brand’s reputation.
Without the “face” or physical location of traditional retail, making sure customers recognize and trust your brand is key.
When a consumer does a Google search for your business, you want them to find you, not imitators muddying the waters.
Not only does this erode consumer trust, it also leads to increased customer acquisition costs as competitors are more cut-throat about poaching your customers.
And as the long-term health of your eCommerce business depends on repeat purchases and subscriptions, being able to fully control your brand’s reputation isn’t an option.
Basically, trademarks and patents ensure you maintain your differentiation from even well-behaved competitors.
This is what Coca-Cola was worried about, that the nickname Coke would blur their image compared to other sodas.
And yet, trademarking and patenting are often overlooked by online entrepreneurs.
The first problem is that the terms trademark, patent, and copyright are often used interchangeably, which creates confusion.
A patent grants you the sole rights to manufacture, sell, and profit from an invention.
A patent can protect a physical product, a machine, or a process.
In comparison, copyright refers to the legal rights of artistic works.
The copyright holder has exclusive rights to print, publish, or perform an original work like a piece of music, a film, photograph, painting, or literary work.
Basically, a copyright is a patent for the arts.
A trademark refers to the words, phrases, symbols and design elements that are used by a company to indicate the source of the product or service.
This typically includes the brand name and logo that appear on product packaging and the product itself.
In other words, anything that helps the customer understand what particular brand they’re buying from is a potential trademark.
In eCommerce, trademarking is absolutely essential for every business, whereas patenting will only be necessary in some cases.
Trademarking ensures that your domains, brand name, and logo are protected as your own, and that consumers can trust that when they see your brand, you are the source behind them.
At minimum, you should look to trademark your brand name, domain name, any key slogans or taglines, as well as any unique product names.
And regardless of what country you’re based in, because eCommerce has global reach by nature, you’ll want to file for international trademarks.
The good news is that this is not a difficult process.
You can register a trademark with a single application, through the Madrid Protocol, that covers 90 countries.
Of course, there are more reasons to want to trademark your brand assets than just giving yourself a layer of legal protection against bad actors.
Trademarking allows you to put the familiar R circle near your brand assets in advertising material.
Although its effects are likely marginal, this is a signal that helps consumers trust they’re buying from the right brand and getting a genuine product.
Think of the spirit behind Coke’s old tagline, “make sure you get the real thing.”
If you’re in a highly competitive market, or one that’s rife with counterfeits, consumers looking for the original, or worried about buying a fake item, will be relieved to find a vetted offering.
Even without this kind of competitive pressure, a trademark is another trust signal that you’re a serious business.
Over time your brand image is far less likely to be diluted, because trademarking is both a deterrent against copycats, and gives you legal standing to actively protect your brand assets.
In other words, you’ll have a stronger brand whose signals and messaging are more meaningful, because trademarking eliminates confusion.
A protected brand image ensures that every brand touchpoint a consumer encounters in the market is genuine.
So, managing your brand’s reputation, and the customer experience, is squarely in your hands.
In fact, many online platforms will only take action against infringement if you can prove you’re the trademark holder.
And with this stronger brand image, the value of your trademark increases as your business grows.
This value creates significant intangible value that will make your business more attractive to buyers and investors.
A trademark can also help you expand.
Once you have goods and services trademark registered, you’re more likely to be granted further trademarks in new categories.
And even if you’re not ready to go through the registration process now, you can make use of unregistered trademarks.
To do this, you simply need to add “TM” in superscript beside the name or phrase you’d like to own.
You can also include a “TM” tag on any images like your logo or product photos as well.
Of course, the legal recourse you have isn’t as strong as official registration, but it’s a viable solution in the meantime.
Something you should know about unregistered trademarks, however: they are first-come, first-served.
If 2 people try to claim an unregistered trademark, whoever can prove they owned the asset first will win in a dispute.
Be absolutely sure that the assets you’re trademarking are indeed unique to you and are original material.
You’ll also want to make sure you have permission to use everything on your site, and in regard to your products.
You don’t want to wake up one morning to discover you’ve been using an image in your store that belongs to someone else.
With both registered and unregistered trademarks, the more distinctive they are, the easier they are to protect.
So the more familiar consumers are with your brand assets, the better.
A trademark that’s strongly associated with your brand will bolster your position in any argument over ownership.
Just placing a “TM” beside any old thing isn’t going to cut it, and it won’t automatically establish your rights to it, either.
The purpose of a trademark is to help consumers understand the source of the goods or services they’re buying.
So you can’t trademark generic terms that would prevent other businesses from selling or describing a similar item.
Which brings us back to Coca-Cola.
Around the same time they trademarked “Coke” in the early 40’s, the brand tried to sue Pepsi for using the word “Cola” in their name.
However, the judge in the case dismissed the suit because they found “cola” referred to a type of beverage, and wasn’t unique to Coca-Cola.
The future of Coca-Cola’s trademark over “Coke” may be in jeopardy someday, too.
If a trademark becomes a generic term, trademark renewals can be rejected, or if a brand stops using their trademark it will eventually lapse back into the public domain.
Hoover is a generic term for vacuum in the UK, even though it’s also a brand name.
Most people understand when they ask for “Coke” in a restaurant that they might end up with Pepsi or some other cola brand.
And it’s already used as a generic term for any kind of fizzy drink in the American South – even though Coca-Cola hails from Georgia.
The association with Coca-Cola is still strong enough, especially because they now use the nickname in Diet Coke, but once again, the work of branding never ends.
Another distinction that might be helpful,
“Apple” is obviously a generic word in and of itself, but the brand Apple is able to retain a trademark of their name because their product category isn’t naturally associated with the fruit.
If they were selling actual apples, they wouldn’t be able to trademark their name.
This tells us two more things about trademarks: one, your trademark is limited to your specific industry.
Unless you can prove the other business is intentionally trying to confuse consumers and suggest a relationship between both entities,
you won’t be able to stop a company in a different sector from using a similar name.
For example, Apple wouldn’t have a good case against “applegreen,” a chain of gas stations in Europe.
Second, this underlines how building a strong brand and the ability to protect and grow your business go hand in hand.
The process to register a trademark is fairly straightforward.
The first step is to ensure the brand name, product name, or logo you’re hoping to trademark isn’t already registered, or that your assets aren’t too similar to another company’s as to create confusion.
Start with your home country and search their online trademark database.
In the United States, you can find it at USPTO.gov, and in Canada at cipo.gc.ca.
Search using quotation marks to look for exact matches, but also be sure to search terms within the names and phrases to find similar trademarks.
If something similar to your assets does come up, remember that trademarking is heavily based on use, and the maxim “use it or lose it” is in full effect.
If you get a match but the current trademark holder has abandoned or closed their business, it may well be available.
Search for the company’s activity level online and on social networks for clues.
This step is advisable whether you’re going to officially register or unofficially trademark with a “TM.”
Something else you should keep in mind, there are various classes and categories of trademarks.
And some categories offer better protections than others.
Fashion, for instance, is a particularly confusing category because in the US it’s considered a manufacturing industry rather than a creative one.
One eCommerce trademark horror story comes from the online clothing brand Mère Soeur [pronounced mare sir].
Its British founder and designer, Carrie Anne Roberts, woke up one day to an Instagram inbox overflowing with messages from loyal customers letting her know that one of her more popular t-shirt designs had been stolen by Old Navy.
The shirt, made for mothers, featured the phrase “Raising the Future.”
Her supportive community lambasted Old Navy with criticism for stealing from an independent designer.
And while the attention eventually persuaded them to remove the shirts from their website… they were still available to buy in-store.
Old Navy’s defense was that Roberts hadn’t trademarked the phrase “Raising the Future,” so she didn’t have a legal case.
One of the reasons more iconic fashion brands are European than American is because Europe has laws that explicitly protect fashion design.
Old Navy did phase out the shirt, but it’s a good lesson.
Trademarking can powerfully protect the longevity of your business, but it isn’t full proof, which is why it needs to go hand in hand with a full brand strategy.
Carrie Anne Roberts was able to score a small victory against Old Navy because she also had a strong, passionate brand community as an extra “back stop” against her brand being taken advantage of.
For more info on how you can build out all aspects of your own brand, you can learn more in our free eCommerce branding book, Checkout.
You can get your copy over at ebrandbook.com
Of course, trademarking is only half the picture.
Trademarking will help customers identify who they’re buying products from, but it doesn’t cover the design and function of your products themselves.
This is where patenting comes in.
This will not be necessary for every eCommerce entrepreneur, and will depend totally on the products you offer.
If you’re dropshipping through a distributor like Aliexpress, or a well-known manufacturer, patenting is not likely an option.
If you have invented, improved, or manufactured your products, however, patenting can give you a serious edge over competitors.
A patent means no one but you can manufacture, import or export, sell, or profit in any way from a protected item unless you grant permission or enter a licensing agreement.
Unlike trademarking, which protects your brand assets and identifiers, a patent protects the function and design of a product itself.
If you’re able to secure a patent, distinguishing your brand and products within the market is much easier.
Again, we can learn something from our friends in this episode, Coca-Cola.
Initially, Coke was a fountain drink.
The only way to order one was at a soda bar.
When Coke was first sold in bottles in 1899, sales exploded.
But you know where this is going.
Their success attracted a flood of competitors, and Coca-Cola was once again in the position of having to defend their unique identity over the following decades.
Their answer to the dilemma was to invite 8 glass bottle manufacturers to participate in a competition to design a bottle for Coke.
Coca-Cola’s vision was simple, they told the companies they wanted a design “so distinct that it can be identified by feel in the dark or lying broken on the ground.”
The Root Glass Company emerged as the winner with a curved bottle featuring Coke’s now iconic ribbed texture.
Minus a few minor changes over the years, the bottle’s silhouette has barely changed since it was granted a design patent in 1923.
And as part of the bottles 100th anniversary in 2015, Coca-Cola unveiled an 8-month bottle exhibition at Atlanta Georgia’s High Museum of Art, underlining how powerful a branding tool their packaging is.
When you set out to secure a patent, there are 3 criteria patent offices use to determine whether or not your invention is eligible.
They must be new, useful, and non-obvious.
This means the product must not have been patented before, and useful means it has a function which is credible and specific.
Because patents are often granted to products that aren’t wholly new but significantly improved versions of old ideas,
non-obvious simply means that a patent won’t be granted to items that only make incremental improvements over their ancestors.
The improvement must be of real value and have required genuine innovation.
Also, unlike trademarks which can be renewed indefinitely, patents last a maximum of 20 years, after which it’s incredibly difficult to get a renewal.
This is why a new drug is only available under its brand name for 20 years until the patent is released and other manufacturers can sell “generic” versions of the same drug.
At this point in the product’s lifecycle, brand preference takes over and consumers make choices based on reputation and trust.
Which is why trademarking in conjunction with patenting is not only beneficial, but crucial to your long-term strategy.
It’s also important to understand the patenting process is long, can be frustrating, and is potentially expensive.
So coupled with the fact that patents expire, it’s worth taking your time to seriously consider whether it’s worth it.
Coca-Cola’s patent on their iconic bottle, for instance, is an interesting compromise.
You’ve probably heard that Coca-Cola never patented their recipe, because they’d have to make it public, and instead decided to keep it a trade secret.
It has managed to stay a secret for more than 100 years, so it turned out to be a good idea.
Had they patented the recipe its protections would have been long vanished by now.
So keep in mind that there are 4 major types of patents: a utility patent, design patent, plant patent, and software patent.
Obviously, a plant patent is unlikely to be relevant here, but it’s given to botanists who either breed or discover new varieties of plants.
Software patents are a type of utility patent and can include computer programs, user interfaces, or algorithms.
They are the subject of some controversy, but I won’t get into that here.
Utility and design patents are likely to be the most relevant to eCommerce entrepreneurs with consumer products.
A utility patent covers a unique function, process, or machine.
A design patent protects the exterior, aesthetic look of the invention, which can include distinctive but functional containers.
If you want to protect the inner workings or structure or your product, you’ll want a utility patent.
If it’s the exterior, ornamental aspects of your product that are unique, go for design, this is what Coke has.
Design patents tend to be easier to attain, usually taking only about 6-12 months, where a utility patent can take 3 years.
Although, it’s very common to file for both a utility and design patent for the same invention, something Apple does all the time.
Traditionally, infringement cases have favored utility patents as they’re easier to prove, but design patents have become stronger in recent years.
In fact, Apple successfully sued Samsung for $539 million based primarily on design patents, accusing Samsung of “slavishly” copying the “trade dress” of the products and packaging associated with Apple.
This included everything from the rectangular shape of the devices, to the similarities of the system icons.
So the process of patenting, just like trademarking, begins with ensuring you’re not currently infringing on someone else’s patent.
The same government agencies I mentioned for trademarks host patent databases as well, so do a thorough search, and make sure you carefully review the images associated with any similar patents.
Some surprising patents in the eCommerce world include One-Click purchasing, which belongs to Amazon.
They also own e-gift cards.
And the ubiquitous progress bar? That’s actually a patent that belongs to Apple.
It’s not for everyone, but if patenting is relevant to your brand, not only will one help you stand out more easily from your competitors, but it will also create an uncrossable moat round your business.
If patenting isn’t for you, every eCommerce company should be trademarking in order to safeguard their brand.
After all the work of setting up your business and building a brand, you’ll want to arm yourself in order to defend what you’ve created and manage your reputation.
They’re not going to be cure-alls against bad actors, but they can be powerful deterrents, too.
And one last, parting thought: neither trademark or patent infringement are crimes.
There’s no formal agency policing infringement online or offline other than you.
Infringement is a civil offense, so your only recourse is a civil suit.
This means that securing a trademark or patent comes with the responsibility of defending your property.
Unless you’re willing to take on that fight, specifically with a patent, it’s probably not worth the trouble in securing one.
But when they’re used right, in conjunction with a strong brand identity, they’re the tools that turn brands into icons.
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