Many branding agencies are commissioned to create brands for clients to use.  If you don’t check whether your creative efforts are available for your client to use, you may not have fulfilled your contractual obligations and could face being sued.  Fortunately it is easy to avoid this situation, and often at no cost to you as a designer.

Yet again, as a patent attorney, I have had to advise a client that the trade mark which their branding agency created for them cannot be used.  This is after they had already committed high in the tens of thousands of dollars on packaging and launch promotions.  Who is at fault here, and what should have happened?

If you are a designer or agency who creates a brand for someone to use on their products or services, then technically that is what you should supply.  Is there any value in providing them with a masterpiece of creative talent which they can’t use?  In the commercial world, NO!  Which brings us back to the fact that if you are designing brands for people to use – and brand means a trade mark which can be applied to market their goods or services – then they should be able to use it.  If they can’t, then you should list yourself in the phone book under “Unusable Brand Designers”.

If a client approaches you in good faith, to develop a brand for use on their products or services, that is what the law reasonably expects you to provide.  There are a number of legal issues here, which we won’t go into, but providing and charging for a brand which proves unusable leaves you in a difficult situation – both legally, and in terms of your reputation.  As in the case mentioned above, where a client has spent significant money implementing the use of a brand which they were not entitled to use, there is a high probability that they will be coming after you for compensation when things go pear-shaped.

As a designer, what should you be doing?

A brand is technically a trade mark from a legal perspective.  A register of Trade Marks exists which can be searched to ascertain other party’s registered rights to a mark – which can be a word, logo, sound, smell, or colour.  If someone else has already registered the brand you are developing for your client, or have registered a brand which is confusingly similar to what you are developing, then you have a significant issue.  Unregistered rights also exist in NZ, and there are also ways of assessing these.

As a designer, it is arguable that you need to check that the work you are developing will be available for use by your client – this will not only save you time spent developing a brand which is unavailable, but also avoid a situation where a client sues you for providing a brand which cannot be used.  Nominally, any brand should be checked as early in the process as possible.  While you could do this yourself, interpreting results is a specialist task, and it is also easy for the inexperienced searcher to miss items of relevance.  Ideally you should have a relationship with a patent attorney firm, or trade mark specialist – costs which can be passed on to your client as a separate cost.

When to search depends largely on how you work.  If you like to prepare fairly complete concepts to your client, you may decide to search quite early and prior to investing too much time in design.  Alternatively you might present the concept to the client, noting that further work is subject to trade mark searching and assessment.

As a rule, trade mark investigations can often be done quite quickly (often same day or overnight) and inexpensively.  In the most part, early searching may be performed to assess if there are likely to be any major issues if you proceed down the path of a particular concept.  Later down the development path, further searching or discussion with an attorney may be performed to make sure you haven’t strayed into the path of any potential bullets.  Final hand-over to the client might also come with a written recommendation that, while preliminary searching has been performed, the client should instigate their own further searching to assess there are no problems with their intended use (sometimes clients change the products or services that they are going to use their brand on).

Could you contract yourself out of searching.  Possibly, but would you rather be seen as a proactive full service firm or not?  Alerting your client to trade mark issues, also alerts them to the possibility of trade mark registration – i.e. registered legal ownership of the brands you have created for them, and the goodwill they are going to create.  Most clients appreciate being made aware of this, but (those I’ve come across) are often resentful of so called branding experts (agencies) who neglected to provide this basic information.

Significant information about trade marks is provided on our main website: http://www.iprima.biz/#/tm-procedure/4518027736

Take note: a typical scenario 1 for a client using an unavailable brand.

You deliver the brand and concept to the client.  You might even arrange for all the printing, labeling, packaging, etc. to be done.  The client spends $50k on the packaging and contents.  They spend $25k on advertising and promotion.  Then they get a legal letter noting they are infringing someone else’s trademark.

They might end up in Court facing an injunction, followed by full infringement proceedings.  All product might have to be recalled and destroyed (you have placed your client in a position of expensive legal proceedings).  People stocking their product might also be subject to legal proceedings, and be out of pocket for recalled product (you have destroyed your clients distribution channels).  Your client might end up paying damages, Court costs for the other side, their own costs, and other ancillary costs (you have given them a severe headache and financially crippled them).  Your client might need to present sensitive financial records to the other side for damages to be assessed.  If they are still standing they might then come after you to see what costs can be recovered.

Take note: a typical scenario 2 for a client using an unavailable brand.

You deliver the brand and concept to the client.  You might even arrange for all the printing, labeling, packaging, etc. to be done.  The client spends $50k on the packaging and contents.  They spend $25k in preparation for advertising and promotion.  Prior to launch, and after committing the above costs, they become aware they cannot use the brand.

At this point your client probably still has sufficient resources to investigate action against you if another solution cannot be readily found.  As a designer you might find yourself in a very delicate situation, and possibly liable for many of the costs.

As a patent attorney, it is easy to expect everyone to be expert about brands.  This belief is reinforced by listening to my nine year old daughter and friends, who are expert at distinguishing between brands.  However, often I am reminded that most people – even those who design brands and marketing materials – often do not know what a brand or trademark is - (for this article I’ll use brand and trademark interchangeably).

So what is a trademark?  In the Trades Mark Act, a trademark  is “a sign which is capable of distinguishing goods or services as having a particular trade origin”.

It is those last words which are most important – “having a particular trade origin”.  A trademark does not tell you what the product is – it tells you where it originates.  Think of the brands Ajax and Handy Andy.  Could a visitor to this country actually work out what the products are from the brands?  No.  The important thing, as far as trademarks are concerned, is that the public is informed that they are likely to come from different sources.  Just as McDonalds fast food is from a different franchise and company than Burger King, or KFC.  That is the role of a trademark.

That, also, is why brands are so important.  If you are in business, your trademark lets people know that you are different to your competitor.  If your sign-writing, marketing, and advertising are effective then they are not going to end up at your competitor if they are looking for you – if you’re shopping for McDonalds, you are not going to end up at KFC by mistake.  Your brand is your personal or business identity, and informs people who stands behind the product or service.

What a trademark isn’t. 

A trademark does not tell you what the product is.  If you look at any well designed product label, or sign above a business premises, you’ll notice there are two portions identifying the product or premises – the trademark, followed immediately by a description of what the product is or the business does.  Here are some examples: 

• “Handy Andy liquid cleanser” - Handy Andy is the brand, and liquid cleanser describes the product;
• “Jim Beam Kentucky bourbon whiskey” - Jim Beam is the brand (and lets you know it’s not Jack Daniels) while ‘Kentucky bourbon whiskey’ tells you what the product is;
• “IPRIMA Patent & Trade Mark Attorneys” – IPRIMA is our trademark and differentiates us from our competitors, while ‘Patent & Trade Mark Attorneys’ tells people what we do.

It’s all quite simple really, but there is an enormous temptation not to use these rules.  So what happens if you don’t follow the rules – well that’s a story for another article, but quite simply, you could end up having no rights to your brand and with anyone (including your competitors) being able to use your brand on their own products.  A harsh lesson that’s even caught multi-nationals out.

Many inventors become so excited about their innovations that they enthusiastically rush forward without considering factors affecting successful commercialisation.  Whether you intend to sell your idea to someone else, or seek an investor to assist in commercialising your innovation, there are some things you should and shouldn’t do.

For small businesses and investors, there comes a time where you may require the services of an investor to help get your innovation underway.  There can be several reasons for this, such as:

•  you need financial assistance to get the product ready to release on the market;

• you need the business skills an investor may bring, to help commercialise your innovation;
• you need the distribution networks and contacts an investor might have, to help get your product into the market more quickly;

Whatever the reason, these people are called investors for a reason – they are going to invest resources with you, be it time, money, skill, and or capitalising on their existing business relationships.  For this reason, investors are particular about what they invest in, and generally consider:

• they will eventually like some return;
• they like any risks to be minimised;
• they like flexibility and lots of options for commercialisation.

So what might an investor look at, and what can the average small business or inventor do to make their project more attractive to investors?  While each investor varies in relation to their preferences, common bottom line criteria that we see most investors check are:

• they want there to be some IP (Intellectual Property) in place, or at least the option still to remain for pursuing adequate IP protection;
• they want any IP to be in order, and professionally done (and will generally have this reviewed by their own patent attorney);
• they will generally want the option to pursue overseas IP protection, and ideally for the period before committing to this to be as long as possible.
• they will assess how much work might be required to get the innovation ready for market (sometimes the amount of work required can surprise inventors) and this will affect whether they invest, or how much return they will expect;
• they will often perform some market analysis, and financial analysis of expected returns before making a final decision;

Whatever you can do as an inventor, or small business, to satisfy these criteria will often increase your rate of success of finding an investor, as well as the amount of commitment they might make. We realise that it is not always an ideal world, but if it was then what you should do prior to seeking investors includes:

• conducting some patent and market searching to assess if the invention is novel and protectable (though an investor will probably repeat this process more thoroughly if they are interested;
• filing appropriate applications for intellectual property – this should be done by a patent attorney, and ideally as part of an IP protection strategy. Why? - because nothing scares an investor like a self-filed patent application, and these are likely to be criticised when the investor asks their patent attorney to check out the IP.  Also, patents are only one possible form of IP protection and self-filers tend to miss out on other forms of IP protection which may be important and are commonly identified in a patent attorney’s IP strategy;
• seek investors promptly.  When you file IP protection, time limits begin for certain options (such as filing overseas).  Investors prefer to have some time up their sleeve before options expire;
• try not to publish your invention (which includes public use, offer for sale, posting on the internet, or showing publicly).  The reason is that sometimes time-frames become tight and re-filing options (or making use of foreign grace periods for filing after disclosure) need to be considered.  These options may no longer be available once public disclosure occurs;
• also consider contacting government bodies such as TechNZ (FoRST), NZ Trade & Enterprise, local Innovation Parks, local Business Development Centres or Chambers of Commerce for advice on contacting and approaching investors.  Many investors are often found because someone knows someone who is looking for something in particular.  Many of these enterprises can also help advise you on how to become more investment ready, and may have available grants to assist in various aspects of your commercialisation.

What if you haven’t followed the ideal course of action, and are worried about whether you are investment ready?  For the IP side, it is best to contact a patent attorney (such as IPRIMA).  There will be a consultation process in which we assess what solutions may exist to improve the attractiveness of your innovation.  Remember that IP is one of the first things that investors check if they have an interest in your innovation.  Remember also that often you only get one bite at the cherry – if they are put off at first, they probably won’t come back.  Remember also that an investor may go online to check to see if you’ve filed any IP, and if they fail to see a known patent attorney firm as the address for service, they may very quickly move on (without you ever knowing about it).

Contact government related organisations, and business oriented organisations for advice.  Many of these organisations not only know possible investors, but can help further groom you for seeking investment.

Get feedback on businesses who promise to find investors; look for people who have used their services and ask how they found the process.  Do not necessarily sign up for business advancement schemes which cost you money until, again, you have obtained some feedback and assessed whether their services are appropriate for where you are at; many services are aimed at corporates and are not necessarily going to provide good value for small businesses and inventors who have significantly different needs or resources to draw upon.

At the end of the day, can you guarantee an investor investing in your innovation? No, though you can certainly increase your chances by taking steps to ensure you meet investors’ bottom line criteria and present a professional and complete package.

More info:

Protecting IP http://www.iprima.biz/#/protecting-ip/4540421234

When to apply http://www.iprima.biz/#/when-do-i-have-to-apply/4540582150

Filing patents overseas http://www.iprima.biz/#/what-about-overseas/4540584018

Tech NZ http://www.frst.govt.nz/funding/business

NZ Trade & Enterprise http://www.nzte.govt.nz/Pages/default.aspx

In the current economic climate, branding can be the make or break of your business. All too often we forget about what branding is.  In this example a nine year old girl and her dog provide an excellent example about what successful branding is and how successful it can be in an adverse market place.

Whenever I walk my dog Mocha (pictured above), we are always stopped.  As a Keeshond (pronounced Case-hond) he is somewhat of a rarity, and that alone attracts attention.  However, it is his personal image which breaks the barrier to cause most people to approach and ask to pat him, be photographed with him, and to find out more.  

 As a patent attorney I am forever doomed to parallel everything I see and notice with stored knowledge and experiences.  It did not take long to realise that Mocha was the perfect example of great branding. 

 For instance, he is distinctive.  He is different from all the other retrievers, spaniels, and shepherds which are out there.  For that reason he is memorable.  Most people are programmed to notice that which is different.  Innovation and uniqueness (distinctiveness) attract attention.  Go to a show or exhibition, and where are most people gathered? – around the new products section of course.

 For that reason, distinctiveness in brands is good.  Want to be noticed and remembered – adopt a brand which stands out. 

 However, distinctiveness is not the end of the story.  Noticing something new is different from interacting with it.  When you see a new product on the shelf consider what makes you go and pick it up rather than walk on by?   

 Again the answer lies with my dog Mocha.  He is blessed with certain characteristics which appeal to people and make them want to interact.   

 He is fluffy, which evokes a tactile response so that people want to touch him.  The fact that patting him is like stroking a sheepskin rug reinforces this emotion when people interact with him. 

 He looks like he is smiling or grinning.  This makes him look friendly and approachable, and people respond by wanting to interact with him. 

 He responds favourably to affection and patting, which implants a favourable experience in peoples minds. 

 Consequently he possesses all the qualities of a great brand – he is noticeable, distinctive, memorable, approachable, and reinforces this with positive emotions once brand interaction is initiated.   

 Recently my daughter, aged 9, exhibited her entrepreneurial skills during the school holidays.  She drew an A3 poster saying “Pat the Dog – 20 cents” and sat outside one of the cafés in Browns Bay, Auckland, along with Mocha.  Being late in the afternoon on a cold windy weekday with semi-deserted streets, I did not fancy her chances.  I was surprised when she had made over $22 in a little over an hour despite, what in business terms we would call an unfavourable market place.  She even said she was so successful that she changed the sign to state that “Children can pat for free”. 

 What is the lesson here?  This is an excellent example of how great branding can thrive even in an unfavourable market place.  In this case the primary brand was Mocha the dog.  He drew attention for the reasons outlined above, and invited interaction.  My daughter Phaeora (pronounced fee-aura) also contributed as a secondary brand and ambassador – I’m sure I would not have been so successful.   

 The whole brand experience, when you get it right, creates wonderful personal and business growth opportunities.  Apart from making money, my daughter is now looking for other ways to expand on her recent success.  Perhaps next time she will also be selling cards with my painting of Mocha on the front, or taking people’s photographs with him.  In her case this was both personal development, and the potential start of a new business.  As one of my friends said, “She should be on the Apprentice”.  My response was, “She will probably be sitting in Donald Trump’s chair”. 

 My challenge to you today is to think about your brands and brand image – both personal, and for your business.  The real challenge is to answer this question honestly – “Can your own brands come close to competing with Mocha the Keeshond?”