The coronavirus pandemic continues to highlight the importance of online brand protection. In a recent webinar, Venable attorneys Andrew Price and Meaghan Kent, along with Jennifer Homer, vice president at the Association of Talent Development, discussed strategies nonprofits should consider when working to maximize brand value, conduct a successful rebrand, or monitor the use of copyrighted materials.
Maximizing Brand Value for Nonprofits
Several components contribute to a brand’s value: distinctiveness, availability, and exclusivity, together with registration, control, and business performance, create a brand’s strength. At its core, however, a brand’s value often relies on the ability to register and control the trademark. Since the pandemic, some new trends have emerged among nonprofits looking to maximize their brand value. Nonprofits are seeking cost saving opportunities by moving faster to jettison underperforming brands and are taking more care to protect their high-performing brands by ensuring their registration and licensing are up to date and correct. Furthermore, nonprofits are still trying to carve out more space in the market in this difficult period by moving forward with rebranding and the creation of new brands, and by focusing more on distinctiveness and exclusivity in brand selection. Risk tolerance among nonprofits 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 nonprofits, 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 nonprofits. Meanwhile, descriptive and generic marks offer little or no protection. In general, and particularly in the post-COVID-19 environment, nonprofits should avoid generic or descriptive marks and instead try to secure trademark names that are high on the distinctiveness continuum, so that a brand may have the strongest possible protection.
Tips for a Successful Rebrand
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 toward modernizing old trademarks by incorporating more color and warmth into logos and other branded materials. Some brands are also moving away from difficult acronyms in favor of slogans. In order to ensure a successful rebranding exercise, however, it’s critical to allow for sufficient time to move through the various steps. These include searching and clearance; filing for federal trademark protection; approval and issuance of registration; and maintenance of trademark rights. Applicants should be aware that it can take considerable time to get through each stage. Nonprofits engaged in rebranding should also consider the following:
Be sure to search and register key marks in key countries where the brand offers key goods and services. When doing so, it’s important to research how the brand name will translate into other languages—not just the literal translation of the words but their connotation in other cultures. Also, examine how the characters in the logo might be interpreted in countries using different alphabets.
Beware of Infringers
Any organization that has a global footprint may be susceptible to a “web of infringers,” which could seem like separate entities or individuals but are actually working together to steal the rights of a legitimate brand. It’s important to bear this in mind when looking to clear a trademark internationally.
Rebranding the Field
In some cases, a nonprofit or other organization engaged in rebranding may have to look beyond just changing their own name or logo. In such instances, the rebrand will have to portray not only how the particular organization has changed or grown, but may also have to articulate how the profession or field has grown or matured.
Licensing for Trademarks
It’s very 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 (for instance, several different organizations may sometimes operate under the same nonprofit umbrella). Quality control is also essential, as failure to license correctly can result in abandonment or “naked licensing.” In other words, the organization could risk losing trademark rights altogether.
Keeping Legacy Marks Alive
Following a rebrand, consider keeping old logos and other legacy marks visible on websites and other branding materials to help customers recognize the brand and to understand the purpose behind the rebrand. Keeping these legacy marks alive also serves to protect them from misuse and helps 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 of time in order to preserve what’s known as “residual goodwill.”
Copyright Exposure and the New Digital Format
Any content that an organization displays or distributes has always needed to be appropriately cleared to avoid exposure. But today, with so much content online, it’s more important than ever to secure clearances, because the likelihood that the infringement will be discovered is so 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. It’s important to remember that the mere fact that an image is available online or posted on social media does not make it 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. Licensing music in a digital environment is rife with complications, however, often involving varying rights, multiple copyright owners, and several different types of licenses. As any unauthorized use in online formats is likely to be detected, concerned parties should seek legal advice on obtaining the correct clearances.