The Creation of Trademarks – Cooperation Between Marketing and Legal Professionals

In May, I attended the International Trademark Associations (INTA) Annual Conference in Boston. One session I found particularly interesting involved marketing professionals and trademark lawyers discussing how to work together to create a strong brand for a client.

In my experience, I usually get a call from a client’s marketing department after they have gone through the creative process and selected a new brand for a product or service. The panel discussed having the trademark lawyer involved in the process with the marketing department and not just used for approval and registration.

The professionals on the panel included the chief trademark counsel at Johnson & Johnson, a trademark lawyer from a large law firm, and the chief experience officer for the American Marketing Association. They recommended that lawyers and marketing professionals recognize they are both working to build the best brand possible.

Trademark lawyers know that the strongest trademarks are arbitrary, fanciful, and non-descriptive (i.e., Nike, Amazon, Starbucks). Marketing professionals prefer more descriptive marks since they focus on communicating the benefit of a product or service to the consumer. The trademark lawyers and marketing professionals should discuss these different points of view to determine the best strategy.

Marketing professionals and trademark lawyers should also work together to determine brand guidelines to protect the trademarks, covering everything from the selection of a domain name to how a mark is used and where.

Instead of viewing trademark lawyers as risk-averse and difficult, marketing professionals should recognize that lawyers are trained to review a lot of information, analyze it, and give logical advice. Lawyers need to recognize that marketing professionals are creatives who are often passionate about creating a brand and therefore can be protective of their creations.

The lawyers and marketing professionals should and can bring open minds to the project and assume that both have positive intentions. A collaborative and open-minded working relationship can only benefit the client.