Trademarks and brand strategy

by | Jan 14, 2015 | Trademark

Reflecting on 2014, I can separate EmergeCounsel’s trademark practice into three categories:

    1. Searching and trademarking a name or a logo (very straightforward and cost efficient),
    2. Fixing the filing of a trademark that the entity screwed up by filing without the assistance of counsel (somewhat straightforward to trademark attorneys but not very cost efficient), and
    3. Doing general business structure work where I discover that the organization has done nothing to protect their brand and that there most likely are trademark complications that are going to require them to rebrand or aggressively carve out the brand. (not at all cost efficient).

What is brand strategy?

The most efficient companies I work with have a brand strategy. If you sell anything to anyone, you have a brand. Brand strategy encompasses the how, what, where, and to whom you plan to brand/market your services to. Trademarking involves how you are going to formally protect that brand strategy.
Clearly articulating brand is important because it:

  • Encapsulates company reputation in very few words/images.
  • Distinguishes competitive goods.
  • Signifies the consistent quality of those goods or services to consumers.

So, for example, if a company invented the next great search engine and branded it XYZAFDCXQ Search Product, that company is not effectively branding because the brand is confusing, lengthy and non-distinguishable. Compare that to Google, Yahoo or Porsche, all which create an immediate, consistent brand image in most user’s minds through a combination of look and feel, logos and naming.

The four-tier brand strategy approach

Branders utilize a four-tier approach for brand/trademarking.
 1. The house mark
The first tier is called the “house mark,” which is used for all company goods and services. For example, Apple is a house mark. Everything Apple ( sells has Apple attached to it: Examples include Apple iTunes, Apple Mac, and Apple iPad. This doesn’t mean that the house mark has to be used every time the product is mentioned (e.g. most people don’t say, “I am looking it up on my Apple iPad” but just “I am looking it up on my iPad”). However, because of the effective house mark branding virtually everyone knows that the iPad is an Apple brand.
House mark may not have any meaning on their face (look up the words Google ( or Kleenex ( However, through design and look and feel, house marks should create definitive image.
 2. Second-tier marks
Second-tier marks are individual marks for products or services.
Using the Apple example, various products branded as iPad, iPod, iPhone, and Mac are all very strong second tier marks that stand on their own.
3. Third-tier marks
Third-tier marks include both sub brands, regional brands and more limited range of goods and services.
For Apple, sub brands include the iSight Camera that is included in its iPhone 6, or the Apple EarPod headphone accessory that is included with the iPad. They are third-tier marks, because they only attach to its second-tier marks, and not to all Apple products universally.
A good example of regional third-tier marks can be found in grocery chains. For example, Kroger is one of 50 largest companies in the United States. However, if you live in the western United States, you probably have only heard of one of their regional brands/stores such as King Soopers, Ralphs, Fry’s or Smiths. Those are all regional brands that have extremely strong recognition.
Another third-tier mark is Best Buy’s “Geek Squad” brand. Geek Squad provides warranty and repair services, and are usually located in Best Buy ( stores. Their services are more limited and focused as compared to Best Buy’s comprehensive focus on a vast array of consumer goods and services. Geek Squad is also separately branded from Best Buy so does not constitute a second-tier mark.
4. Fourth-tier marks
Fourth-tier marks have limited duration, or involve tags, slogans or unique colors.
Macy’s provides good examples of fourth-tier marks. Macy’s periodically has “One Day Doorbuster” sales which come and go. However, Macy’s had trademarked the terms even though it does not use them in every ad campaign. Macy’s also trademarks “Magic of Macy’s” along with a specific star design which is its both a specific word and design tag line. Finally, most Macy’s uses a unique rich red color scheme in all of its color advertising which it protects. All of these are considered fourth-tier marks.

All brand mark levels are important

As you can see, all of these tiers have equal importance. For example, just because Geek Squad is a third-tier mark, it still has huge brand presence and is responsible for millions and millions of jobs and revenue. Apple’s “iPhone” second-tier brand is just as important to the company as Apple. Nike’s “Just Do It” tag is a fourth-tier mark that has huge value.

Mapping and protecting brand

I find it really important to map out brand comprehensively, and revisit the branding as companies grow. It can be as easy as mapping out strategy on a piece of paper using the four-tier approach. It can also be as complicated as hiring a brand manager who manages all of various brand assets (Apple has dozens).
One of my favorite aspects of my practice is to help entrepreneurs manage brand. The first step is a brand management plan to protect intellectual property. Unprotected brands are easy to steal and exploit. Steps include:

  • Clearing brand through a trademark search so clients do not spend significant resources on a brand that may already have been taken
  • Registering and maintaining those marks.
  • Creating branding guidelines for employees and third parties (including in social media).
  • Protecting trademarks against counterfeiting and gray market activities.
  • Policing brands.
  • Managing internet domain names.
  • Creating revenue opportunities through trademark licensing.

Remember that brands create significant value for those willing to invest in them. Efficient entrepreneurs plan early, spend less, and effectuate significant economic outcomes.


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