What is soft branding? Is it better to be a soft brand or a hard brand? Claire Hawkins, Chair of Garvey Schubert Barer’s Intellectual Property Practice and member of Garvey Schubert Barer’s Hospitality, Travel and Tourism Practice, gives serious consideration to the outer edges of soft branding and offers her insights on the intellectual property components hoteliers and restaurateurs need to consider. Thank you for today’s post, Claire! – Greg
“I know it when I see it”: Considerations for Soft Branding
Independent hospitality businesses can benefit from the appeal of freedom, individuality, and uniqueness, but over time may also struggle with the lack of convenience and efficiency that established, consistent, and defined brands have. One-of-a-kind hotels, restaurants, or the like are great at capturing customers preferring “hidden gem,” “independent,” “boutique,” “local,” or “customized” venues, but by not going so far as to define the scope or consistent aspects of their brand, may not have the resources necessary to adequately protect the time and effort it took to develop and implement the unique aspects of the brand. A sign of success is surely competition, and it takes real cash and resources to stay ahead of trends. How then is it possible to have the flexibility of a unique and undefined brand, but also to prevent brand infringement and consumer confusion from copycats?
The décor or trademarks of major brands such as Marriott, Applebee’s, or even Motel 6 and Olive Garden are easy to define and identify. Recognition is one benefit of defined branding, along with the ability to set and meet customer expectations. The counterpart to these hard brands is of course the soft brand. Soft brands essentially define what a brand is supposed to do, rather than what elements make up that brand. Is it better to be a hard or a soft brand? Hard brands have the perception of strength and solidity, and soft brands communicate of grace and fluidity. With either, consistency is key, but consistency is much harder to achieve with soft brands.
If it is at all possible, building a more defined brand portfolio is helpful when trying to keep hold of your good idea, and to stop others from appropriating efforts or styles you worked so hard to establish. One way to protect and be better able to police a brand is to have definitions, uniformity, and registrations.
Not just logos or words can be registered and protected with the US Trademark Office, but décor, product packaging, and color schemes as well in the category of “trade dress.” Trade dress protection is intended to protect consumers from packaging or appearance of products that are designed to imitate other products and to prevent a consumer from buying one product or service under the belief that it is another. For example, an arrangement of a children’s clothing line, the design of a magazine cover, the appearance and décor of a chain of restaurants, and a way of displaying wine bottles in a wine shop can all be protectable trade dress.
To register trade dress with the US Trademark Office, the trade dress must be defined and consistently used, but also be distinctive and not simply functional. These requirements serve the purpose of trademark or trade dress protection generally, which is to allow customers to identify the source of a product or service by creating recognition in the consumer’s mind.
Given these seemingly strict requirements, before dismissing trade dress registration out-of-hand as to restrictive to your one-of-a-kind brand, consider whether you might still be able to meet the minimum threshold to register some aspects of your brand, which could go some distance to both building a portfolio of intellectual property assets that can be leveraged, but also allow you to stop infringers and copy-cats:
1. The US Trademark Office requires a clear statement of the goods or services offered in connection with the trade dress, e.g., “retail store services featuring communication products and services,” “hotel and motel services,” “casino services,” “resort hotel, restaurant, bar, and lounge services,” or the like.
2. You must also submit an image and description of the trade dress to be protected:
? Color is not claimed as a feature of the mark. The mark consists of trade dress consisting of a three-dimensional building with concave facade, a curved roofline sweeping up toward the left top corner when viewed from the front and the word "WYNN" in a stylized script in the top left corner. The horizontal lining does not indicate color, but is a feature of the trade dress.
? Color is not claimed as a feature of the mark. The mark consists of trade dress of a hotel's exterior. At one corner of the building is a tower featuring several windows beneath a ledge, above which is a pedestal featuring the stylized text "MOTEL 6". The elements in the drawing shown in broken lines show the position of the mark as applied to the building in which the services are provided and are not claimed as features of the mark.
? The color(s) white, orange, gray, dark orange, and beige is/are claimed as a feature of the mark. The mark consists of trade dress consisting of the interior of a hotel room. The walls in the room are white except for two walls that are colored orange: the wall behind the combination TV stand/hanger rod and the wall behind the bed. The bed features a gray blanket with a dark orange sash. Above the bed are two white rectangular wall lights. On one side of the bed is a built-in luggage rack that spans the distance to the wall featuring the window and on the other side is a built-in nightstand that spans the distance to a beige seat, which conforms to the wall. The seat is immediately adjacent to a writing desk, beneath which is a four legged chair, and above which is a mirror with a small ledge beneath it and below a rectangular white light. At the far end of the room is a window covered by a dark orange curtain that matches the bed sash. The elements in the drawing shown in broken lines show the position of the mark as applied to the room in which the services are provided and are not claimed as features of the mark.
? The color(s) green is/are claimed as a feature of the mark. The mark consists of a three-dimensional trade dress depicting two exterior doors. Each door has a green frame, a green bottom portion, and a glass panel in the upper portion. The wording "ROCCO'S TACOS AND TEQUILA BAR" appears on the glass panel. Door elements shown in dashed lines are not part of the mark. The colors black and white represent background, outlining, shading and/or transparent areas and are not part of the mark.
? The color(s) blue and white is/are claimed as a feature of the mark. The trade dress consists of repetitive wording in blue on a white box, the wording consists of the following, all in blue and in no particular order; hot burgers, pop, cool and frosty soda, luscious frosty soda, creamy shakes, luscious mouth watering warm buns, firm fries, warm buns. The words POP BURGER are in blue and appear at the center of the top of the box, which logo consists of the word POP with the image of a burger in place of the letter O, and the word BURGER written across the patty of the burger.
3. To secure US registration of trade dress you must submit a date of first use and to maintain the registration, consistently use the mark as shown on the registration.
The benefits of federal registration include formal, public notice of your claim of ownership of the trade dress; a legal presumption of your ownership of the trade dress and your exclusive right to use the trade dress nationwide on or in connection with the goods/services listed in the registration; the ability to bring an action concerning the trade dress in federal court; the use of the U.S. registration as a basis to obtain registration in foreign countries; the ability to more easily stop competitors from engaging in behavior that is likely to cause consumer confusion; and the inclusion of the asset in your intellectual property portfolio.
If a definitive brand is not your thing, here are some additional options to help protect your investment in a soft brand:
? Agreements – consider non-compete language in agreements with employees, franchisees, licensees, and the like with respect to specific or general brand aspects.
? Remaining fluid – put time and energy into staying ahead of the trends to minimize mimicking, and be willing to jettison aspects that become trendy or are appropriated by others.
? Distinguish yourself – stay aware of competitors or similar businesses and avoid any similarities so that any copying of your own style is easily identified.
? Selective registration – choose one aspect in a softer brand that is key, use it consistently, and obtain registration for that aspect.
It is a great time to be an independent business in the hospitality industry, but be aware of both the limitations of an intentionally un-defined brand and the benefits of identifying, registering, or otherwise adding some protection to the business you are building.
If you have any questions about brand or trade dress protection, please feel free to contact me directly email@example.com.
Photo credits: images are from the US Trademark Office’s website and are used as examples of successful trade dress registrations.
This week finds me at LA Live in downtown Los Angeles attending this year's PhoCusWright Conference. Those in the hotel industry know LA live well - for the past few years the JW Marriott at LA Live has served as the host hotel for the industry's annual ALIS Conference. While ALIS is known for bringing together the hotel industry's best and brightest, I would submit that the 1600 plus attendees (from 40 plus countries) at this year's PhocusWright represent the future of travel and the hotel industry.
The first day of the Conference featured no less than 32 companies (of varying size and age) presenting their newest travel innovations. I sat through many of these presentations, which provided me an incredible look into the future of travel, distribution, the use of travel data and content and other travel innovations. Some key takeaways . . .
- Web transparency (and its many effects) continues - a number of the presentations featured functionality allowing travelers to hold or book a specific rate and then cancel that booking and book at a new, lower rate in the days, weeks or months prior to arrival.
- Content is king - studies of travelers continue to show the value and influence if relevant, superior content - a number of the innovations presented either promoted their content (or access to third party content) or their ability to curate or organize content in a way no one else can (debatable)
- Cloud computing is ubiquitous - if you are in the computing world, you've known this for years.
- The travel experience - from the top of the travel "funnel" through the trip itself is becoming more segmented and bifurcated every day - no wonder hoteliers struggle to get theirs arms around and control guests' experiences - from inspirational searches, to pre-arrival communications and up-sells, to in-destination marketing, to post-stay feedback and evaluation - there are increasing numbers of industry participants that wish to control the guest's experience.
- Focus on ancillary services continues to grow. Innovators are looking beyond the large air and hotel components of travel to smaller, more fragmented ancillary services and products - rental cars, public transportation, restaurants and travel insurance.
The second day of the Conference featured a number of interesting substantive presentations leading up the afternoon's "keynote" addresses by Cvent, Ctrip, Homeaway and Expedia. Similar presentations are scheduled for the third and final day.
Look for my post-Conference blog post later this week!
Our friends (and former contributors) at Seattle-based BrandVerity have produced another detailed study on third parties’ use (and dare I say, abuse) of popular brand terms in paid search advertising. Many of you have experienced these abuses (and the associated frustration) yourselves. Now details about these abuses (and the supporting metrics) are in one comprehensive report. The report is available for download today at https://www.brandverity.com/state-of-branded-keywords-paid-search-q3-2014/
Keep BrandVerity and this report in mind next time you negotiate a distribution agreement or, once the agreement is finalized, you wish to keep your distribution channels honest.
Since 2013 the number and type of web domains has exploded and is having a major impact on brands. Ruth Walters has been watching this new era of growth and can share her insights on brand protection. Ruth focuses on hospitality operations and general intellectual property and technology transactions. Thank you for today’s post, Ruth! -Greg
Back in the olden days of last year, there was no particular reason for hospitality industry members to be particularly interested in the administration of the Internet unless you were curious. Now, it benefits every brand owner to understand and pay attention to the basics of how new domain names come into being, who selects them and how they become public. Beginning in late 2013 and early 2014, the number and type of domains has exploded, providing brand owners both the opportunity to expand and strengthen their on-line presence and to expand the number of potential infringing domains there are to worry about. Much of the domain name process operates outside the awareness of many brand holders, and many have been caught unaware.
The Internet is administered by a non-profit corporation called the Internet Corporation for Net Names and Numbers (ICANN). It is this entity that decides, among other things, what letter strings go after the dot. Beginning in 2012, ICANN began its New Generic Top-Level Domains Program to “increase competition and choice in the domain name space.” ICANN accepts applications for new letter strings and then evaluates them and delegates them to the applicant registry (not registrar, which is the entity in this process most familiar to brand owners and the public—like Register.com, GoDaddy, or Network Solutions). Eventually, the registry works with ICANN-approved registrars and the new strings are available to the public for registration.
Some terminology: the letter strings after the dot are called top-level domains (TLDs) and are divided into two main categories—generic top-level domains (gTLDs) and country-code top level domains (ccTLDs). gTLDs are further divided into two sub-categories “unsponsored” gTLDs (uTLDs) which anyone can register (like .com, .net, .biz and .info) and sponsored gTLDs (sTLDs) which can only be registered by members of a “sponsored community” (like .gov, .edu, .aero)
The huge push in adding TLDs in the last year or so has focused on gTLDs and the addition of a third category of domains, the Internationalized Domain Name (IDNs) which allow TLDs in characters that are not US-ASCII, such as Chinese, Arabic or Cyrillic. These may be representations of existing TLDs, like .com, in the applicable characters or new TLDs or both.
Any brand owner can see the potential problems here. The number of TLDs to worry about has gone from a handful to, over the next few years, possibly more than 1300. That makes more than 1300 opportunities for a cybersquatter to register [your brand] in connection with a new domain and possibly several opportunities missed to register useful new TLDs, such as .review, .hotel, .restaurant or, depending on how you feel about things, .wtf. There is also the possibility that the new TLD itself may infringe a trademark, and ICANN has accounted for that possibility in its review and the provision of a post-delegation dispute resolution process.
The more likely scenario is that the second-level domain (the bit right before the dot) will be the infringing piece. ICANN has responded to the significant concerns of brand owners in this regard by introducing a new rights policing mechanism called the Trademark Clearinghouse, participation in which is mandatory for all new gTLD registries. Rather than requiring brand owners to rely on the Uniform Domain Name Dispute Resolution Policy process, requiring brand owners to proceed only after a potential infringing name is registered, the Clearinghouse allows for some pre-registration enforcement. Successful registration of valid trademarks with the Clearinghouse permits those trademark owners—for a fee, of course—to:
- Apply before the general public for the domain names in which the second-level domains; and
- Receive notice of any third-party registrations for domain names containing an exact match to the registered mark(s) for as long as the records are maintained at the Clearinghouse. The potential registrant of an infringing domain name also receives a warning when attempting to register a domain name during the 90 days after the close of the sunrise period, which is called the “Trademark Claim” period.
Registering with the Clearinghouse, if possible, has obvious benefits. In addition, brand owners can track the opening and closing of sunrise periods on both the Clearinghouse and ICANN websites (ICANN’s site includes sunrise periods out into 2015; the Clearinghouse site is more limited).
The Clearinghouse in turn works with a variety of registrars who provide what are called “blocking mechanisms” for the new gTLDs. In very brief, the owner of a trademark registered at the Clearinghouse can purchase blocking services to block third-party registrations of domain names containing that trademark (and, possibly, similar marks) without having to go to the trouble of defensively registering [your brand].[gTLD] 70 or 80 times.
Uniform Rapid Suspension System
If blocking, defensive registration and notification still don’t work (which is entirely possible, given the nature of the Internet) ICANN has also instituted the URS which creates a more streamlined process for shutting down infringing domain names than even the UDRP provides.
As we have written before in many circumstances, the Internet is a tough place for brand owners and, in some ways, it has gotten tougher. Fortunately, there are mechanisms that exist to help brand owners keep control of their good names on the Internet and also to explore new opportunities for expanding their on-line presences.
Greg Duff founded and chairs Foster Garvey’s national Hospitality, Travel & Tourism group. His practice largely focuses on operations-oriented matters faced by hospitality industry members, including sales and marketing, distribution and e-commerce, procurement and technology. Greg also serves as counsel and legal advisor to many of the hospitality industry’s associations and trade groups, including AH&LA, HFTP and HSMAI.