What is the True Value of Design?
If you are in the business of marketing your company, I want to talk to you a little bit about the cost of good design. In my many years of business, I run into two types of businesses: 1) those that value good design and 2) those that don’t.

Now, I don’t usually bother with the ones who don’t, because no price will ever be low enough and their marketing is pretty much doomed to fail because it is never given a chance to work to it’s full potential. These naysayers expect design to suck money out of their wallet, and, because they try to design or print the job on the cheap, they almost always reach that expectation.

But, in the interest of being generous, I thought I’d spend a little bit of time on the subject. You know, in the hopes of enlightening you on the benefits of great design and it’s influence on your bottom line…now and in the future.

Step One: Try To Do it Your Own Self
As with any self-help program, the first step is always the hardest. Come on, admit it. You’ve probably had a moment where you thought that your silly designer is expensive and you (or your high school daughter) could do the same thing on your PC in fifteen minutes. You know what? You’re wrong. Don’t believe me? Try it. I bet that after you’ve spend 5 hours “designing” your ad with really cool gradations and cool papyrus type, you’ll print it out, show it to your associates and get laughed out of the office.

Or, worst yet, your associates tell you the love it (you’re the boss afterall and they don’t want to tell you how they really feel about it). So you spend $1600 placing a full-page ad in a local magazine that you are sure is your target customer (you spent 6 hours researching your market and negotiating a media buy). You email your Microsoft Word document to the magazine and they can’t open it, let alone print it out. After you spend 4 hours trying to figure out how to create a pdf, what column inches mean, and what the heck 300 dpi is, it finally goes into production and shows up on the magazine rack.

Guess what? Even if your photos DO end up looking ok (they usually print really dark or red if not converted to CMYK and corrected for dot gain) and your typefaces did print out correctly (they usualy turn to mush if you don’t outline your type). Your ad, at best, looks like every other ad in the magazine that was done by the owner (or the owner’s daughter). Reality is, you’re competing in a saturated market and you’ve failed to differentiate your company.

Step Two: Do a Little Math
Let’s say that you did the ad yourself and you think it turned out just fine. (That Fuelhaus wünderwoman is plain bitter, right?). Let’s do a little math on the hours that you spent buying, writing, designing and producing the ad. Let’s figure that you spent roughly 18 hours from start to finish. That’s about two full days. Let’s say your hourly rate is $100 (I hope it’s more!).

That’s an investment of $1800 of your time that you’ll never get back (time is money, right?). Now add the price of running the ad in the magazine ($1600). Wow! you’ve got a pretty hefty investment in that ad! I don’t know about you, but if I’m spending over $3,400 on project, I want to make sure it’s done right…by a professional.

It just makes good business sense to minimize your risk by hiring a specialist. A good designer will design your ad for the about the same amount without the headaches. A great designer would probably cost a bit more, but would design a high-quality campaign that lasts throughout the year and builds equity in your business.

Step Three: Adjust Your Accounting
Now , I’m sure that you (being a smart businessperson) know the difference between an expense and an investment. An expense, once spent, does not hold any value…(afterall, that’s why you get to write it off at the end of the year).

Brand design, on the other hand, is an investment (and guess what? You can write that off, too!). If done right, a great brand adds value by building brand awareness, customer loyalty and increased sales in the now and in the long term. It’s a foundation to grow on.

Step Four: Make Your Designer a Part of Your Business Team
When you look at it this way, one thing becomes clear. Your design studio is a critical part of your business success. You may have a great product and stellar business team of sales reps, accountants and attorneys—but without the skilled hand of a designer—you have nothing tangible for your company. The designer (web or print) crafts your message, creates your identity and creates the look and feel that your customers relate to, again and again.

Brand is more than an expense.
It’s a tangible relationship between you and your customer.

_Kellie Schroeder, Fuelhaus Wunderwoman

A special article from the attorneys at Baker & McKenzie, LLP
Contact: April M. Wurster :: 858.523.6236

This guideline is designed to give your company an overview of the trademark selection process.  It begins with factors your company should think about when selecting a mark then, once a mark is selected, how to search the proposed mark and finally how to analyze your search for potential conflicts.  Following these procedures should help your company select a mark which will achieve registration at the U.S. Patent and Trademark Office and avoid potential infringement problems.

Selecting a Mark
Strength of Marks
An important factor in choosing a mark is selecting a “strong” mark. The stronger the mark, the more likely the mark will avoid substantive rejections from the U.S. Patent and Trademark Office which in turn reduces prosecution costs. Further, strong marks tend to be easier to enforce.

Strong marks are fanciful/arbitrary or suggestive. Weak marks are descriptive or generic. Fanciful and suggestive marks are protectable. Generic marks are not protectable and descriptive marks are only protectable after secondary meaning is established.

Fanciful or Arbitrary Marks
A Fanciful mark is one which has been “coined” for the sole purpose of functioning as a mark. Fanciful marks include new words such as KODAK and EXXON. An arbitrary mark is a common word used in a new way such as Apple for computers or AMAZON for an on-line bookstore.

Suggestive Marks
Less strong than fanciful or arbitrary marks, suggestive marks are those which suggest a quality for the product such as IVORY for soap, suggesting purity, ROACH MOTEL suggesting a “home” for insects, or GREYHOUND suggesting speed and sleekness. Suggestive marks do not literally describe attributes or qualities of the goods or services to which they are associated.

Descriptive Marks
Descriptive marks are those marks which describe, rather than suggest, the qualities of the products or services with which they are associated. For example, YELLOW PAGES which describes the color of a section of a phone book.

Generic Marks
Marks which are or which have become the name of their product or service. For example, ASPIRIN.

Formative Marks
In addition to the type of mark selected, a mark can be considered week or strong based on the number of formative marks in use. For example, there are many cherry- formative marks for cosmetics, ice-cream and clothes. For each additional cherry- formative mark registered, it becomes increasingly difficult for a registrant to argue it is damaged by the issuance of another CHERRY- formative mark which does not have the same goods and services. Thus, the scope of protection for a Cherry- formative mark may be limited to the specific goods and services listed.

Legal Considerations
In selecting a mark, the following key axioms can save your company a lot of time, expense and embarrassment:

• Do not choose a trademark which is to reminiscent of a better-known one

• Do not choose a trademark which is essentially descriptive of the product

• Refrain from using sensitive words like bio, organic or chocolate which can be loaded with legal significance and where legislation may govern how these terms can be used

• Do not use anything as a trademark if it actually belongs to someone else

Trademark Searching
Once the creative ideas have been narrowed to 3-5 proposed marks, a search should be performed to determine if there are any conflicts with exiting trademarks (registered or common law). A search typically involves two parts: a preliminary search and a “knockout” search.

Preliminary Search
In order to save costs, a preliminary search is performed by in-house attorneys or marketing personnel. The focus of the preliminary search it to assess the initial availability of the proposed mark. To perform an preliminary search, the in-house attorneys or marketing personnel should perform at least three searches (1) a yahoo search, (2) a Google search and (3) a search at the U.S. Patent and Trademark Office (www.uspto.gov).  This type of search will typically result in one of three situations: (1) not clear. This means that an identical mark was found for identical goods; (2) preliminary clearance.  This means that the preliminary search did not reveal any conflicts; and (3) potential problems.  Unless, the preliminary search falls into the “not clear” category, a “knockout” search should be performed.

Knockout Search
A knockout search, as the name implies, is more thorough than a preliminary search.  A knockout search is typically performed by a vendor such as Thompson & Thompson.  Baker McKenzie can facilitate obtaining a search from Thompson & Thompson and analyzing the search results for conflicting marks.

Duty to Search
There is no affirmative legal duty to conduct a search.  However, failure to conduct a pre-adoption search can be an intent factor considered by the court in an infringement action.  Additionally, some courts have inferred a duty to search in circumstances where the junior user had reason to believe that there may be a senior user to the mark.

Searching a mark prior to adoption is also extremely advisable from a business perspective.  It is in the company’s best interest to know whether its investment in launching and building goodwill in a brand is likely to be impeded by someone claiming prior legal rights.

ANALYSIS of the Search
Evaluate “hits” on the basis of likelihood of confusion.  Consider the similarity of the two marks in appearance, sound and meaning and the relatedness of the respective goods or services and their channels of trade.  As a rule of thumb, if the search results in a “hit” for a similar mark on identical goods or a “hit” for an identical mark on related goods, additional investigation is needed.  Further investigation may include analyzing whether the conflicting registration is about to be canceled or abandoned, whether the mark is in actual use, or if the mark is entitled to only a narrow scope of protection due to limited use or similar marks in use.

Timing
After the preliminary search is conducted it typically takes 3-5 days to perform and analyze a knockout search.  Additionally, time should be built into the mark selection process in case the proposed mark does not pass clearance and the process needs to be re-started.

Conclusion
Once the trademark has been cleared, an application can be filed immediately.  In order to preserve a trademark that has not yet been used, the application can be filed as an intent-to-use application.  Prosecution of the application takes anywhere from 8 months to 2 years.  Once the application registers, your trademark rights last 10 years from date of registration provided a showing of continued use is made between the 5th and 6th years after registration.

_For more information on Trademark and Patent Issues, please contact: April M. Wurster at Baker & McKenzie, LLP. :: 858.523.6236

I was watching the Final Four (Michigan and North Carolina) game last night and noticed a lot of advertisement for The Masters Golf Championships. This funky little logo got me thinking. I mean, the ad placements were in the right place and they were targeting the right demographic…but I’m thinking that the brand is in some desperate need of an update.

Do you think this logo is sadly out of date? I do. It is so literal and 1960s looking. It almost looks like a commercial artist from the 60s (think Darren Stevens from Bewitched) drew it up with his ruling pen.

I understand brand equity and I understand history…but I think that a strategic redesign of this mark would modernize the Tournament and be a much better reflection today’s hipper, more tech savvy 50+ year old. (Check out the web demographics at Quantcast)

Everybody is trying to cut costs these days…and as usual…designers and marketeers are getting the broad stroke of the budget cutting pencil. In true fashion, “C” level executives seem to think that innovation and design is a luxury or expense…not a critical part of a business strategy. Forbes even wrote a recent article calling designers “snooty” hmmmm. No comment.

Well, one designer struck back. Keeping an open mind, he visited one of those online sites that offers $50 logos with unlimited concepts and revisions. Sounds like a great deal, right? I don’t know…it’s been a year and he still doesn’t have a logo. Thankfully, he has documented the entire exchange, including the logos that were delivered to him..BTW…his fake company name is hilarious!

Check it out here….enjoy!