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. The 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 the 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 of which create an immediate, consistent brand image in most users’ 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.

 A. 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 housemark branding, virtually everyone knows that the iPad is an Apple brand.

House marks may not have any meaning on their face (look up the words Google ( or Kleenex ( However, through design, look, and feel, house marks should create a definitive image.

 B. 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.

C. Third-tier marks

Third-tier marks include both sub-brands, regional brands, and a 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 the 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 is 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 it does not constitute a second-tier mark.

D. 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 has 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 both a specific word and design tagline. 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 a 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 brands comprehensively and revisit the branding as companies grow. It can be as easy as mapping out a 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 the various brand assets (Apple has dozens).

One of my favorite aspects of my practice is to help entrepreneurs manage brands. 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. Schedule your free consultation today!


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