Protecting Your Brand's Rights

Considering the legal implications of your branding choices is an important second step in the process

By Melinda S. Giftos

September 16, 2008

This is bonus coverage from "Protecting Your Brand" in the October 2008 issue of CUES' Credit Union Management.

A first and well known step in credit union branding is deciding which trademarks and slogans you would like to incorporate. After completing this step, you should take an important second step--to adequately protect your rights and to ensure you are not infringing on any third party's rights. The best way to do this is:

• Talk to qualified counsel to make sure you are using your trademarks and slogans properly. If you have any question regarding selection of marks, counsel can help you understand which elements are worth protecting and which are not.
  
  
• Have qualified counsel conduct a comprehensive trademark search for potentially conflicting marks and provide you with a written opinion regarding any risks revealed through the search. Trademark searches identify any potential obstacles to obtaining federal registration as well as any potential third-party rights you may infringe by using the marks.
  
  
• File federal trademark applications for all your protectible elements.
  
  
• For important elements that may not be eligible for federal registration immediately, discuss how to best build protection in those marks with qualified counsel. For example, color alone can never be inherently distinctive, so to obtain federal registration, you must first show the color has acquired distinctiveness. However, the rules for distinctiveness in colors are somewhat tricky. To most effectively begin building the required distinctiveness, it is important to ensure you are: (1) using the color appropriately as a trademark; (2) effectively highlighting the color as a trademark in your advertising; and (3) accurately documenting your use of the color as a trademark. In addition, you may want to consider obtaining registration for the color on the Supplemental Register to provide constructive notice to others of your use of the color as a trademark and to serve as a record of the time in which your use of the color as a trademark began.
  
  
• Add "TM" or "SM" to all trademark, service marks or slogans you are using. You may begin using ® only after the marks obtain federal registration.
  
  
• Use all marks, slogans, trade dress, etc. consistently. Consistency is critical for not only retaining any legal protection, but also for strong branding. If your members are constantly seeing different variations, you message will be mixed and therefore weak.

Taking these steps will provide you with the best opportunity to ensure your names are strong and that you have the exclusive right to use them. Creating an identifiable and powerful brand does not happen overnight. It takes time, resources and considerable commitment. However, there is no doubt that branding is effective and extremely valuable. When done properly, it can transform your credit union's identity into a highly recognized and respected entity, which, especially in a difficult economy, can be your greatest asset.

Melinda S. Giftos is an intellectual property attorney at Whyte Hirschboeck Dudek in Madison, Wis.

• Go to the current issue of Credit Union Management magazine.