Licensing, Trademarks, and Your Brand
By: Antonella Colella , Esq. attorney and owner of Colella Legal Studio, PLLC, a business and trademark law firm.
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In order to build a successful company, you must learn that branding is life. It’s just as important as a P&L statement or your quarterly sales report.
And let’s be clear, branding is not just your logo or a catchy slogan. It is the very essence of your brand - the soul, the reputation, the identity. Branding is so important that it becomes an asset of the business and is even assigned a value via an Intellectual Property line item on your financial reports.
As a trademark and business attorney, I’ve seen firsthand how legal strategy can make or break a brand. Robust trademark protection, vigilance against infringement, and savvy licensing practices are essential for long-term success.
Branding = Trademarks
Trademarks serve as a source identifier for your brand. Owning a registered trademark gives an owner the exclusive right to use the mark in connection with the goods and services. In the crowded beauty and fashion industries, brands need to make their mark with the consumer in order to survive.
And your branding and your story make that mark.
Trademark is the legal equivalent of branding and is essential to growing your brand. This is like having legal armor on so that you can protect your brand from any competitors using a similar mark, thereby reducing consumer confusion and protecting the brand’s reputation and market position.
Combatting Infringement & Brand Dilution
Trademark infringement poses a serious threat, especially in an industry plagued by counterfeits or dupes. Infringement occurs when there is confusion in the marketplace about the source of goods. A trip to Canal Street or a scroll on DHGATE.com demonstrates the magnitude of the problem surrounding knock-offs.
Take the iconic Burberry check. This pattern is recognized worldwide as a source identifier of the storied British fashion brand. Its notoriety, however, has also made it a target for counterfeiters. Burberry’s attorneys, like most trademark attorneys, monitor their client’s marks and are always on the lookout for infringers, ready to pursue legal action against infringers. Monitoring can include searching online marketplaces, social media and retail establishments and using advanced software to detect potential infringers. Through a combination of cease and desist letters and litigation, Burberry has maintained the integrity of its trademark.
In the beauty industry, dupe culture is having a moment. But counterfeit beauty products can pose not only a branding problem but also a significant health risk. Brands like MAC and L’oreal invest heavily in legal and technological measures to combat counterfeit products. These efforts include using holographic labels, secure packaging and digital tracking all in addition to legal actions against counterfeiters.
A best practice to minimize the risk of infringement and dilution of the brand is to adopt a multi-layer legal strategy that includes:
Conducting comprehensive trademark searches early in the branding process - My advice to clients is whenever you settle on a name, let's perform the search to make sure that the name you decide to use is actually available and not infringing on someone else’s mark.
Regular Monitoring of your marks - A google alert is the least you can do but actually having a professional monitoring your marks may be a good idea. Your trademark is only as valuable as your monitoring efforts.
Educate your consumers - As a brand, you can educate your customers on how to spot fakes
Enforce your rights swiftly - Acting fast against infringers is crucial to upholding the brand’s reputation in the market.
Record your trademark with Customs and Border Protection - once you have a registered trademark you can record your mark with CBP so that they may intercept any counterfeit goods entering the country.
International Trademark Strategy for Protection in the Global Arena
Thinking small or hyperlocal is not a feasible strategy in our interconnected global world. Online retail outlets like Amazon have blurred the lines around where brands are located. A U.S. trademark does not extend protection abroad so brands that have an international reach, have manufacturing operations in a particular country or are selling in or to a particular country must consider expanding their registration to other countries.
Different countries have different standards for trademark protection and enforcement. For example, some countries have a first-to-file system while others use a first-to-use rule. Brands must be aware of the timing and method of registration to ensure they meet the necessary criteria for registration.
Another consideration when entering the global arena is to recognize that brands may need to adapt to local customs. A logo or slogan that resonates in one country may not have the same impact or even be permissible in another. I regularly work with international brands entering the U.S. market. Sometimes we need to register a different name or slogan in the U.S. because their intended mark is simply not available for registration in the U.S. In that case, it becomes important to monitor and enforce the entire trademark portfolio based on varying jurisdictional requirements.
Licensing as a Branding Strategy
Licensing and partnerships offer brands an effective way to expand their market reach while maintaining control over their brand identity. By strategically partnering with celebrities or influencers brands can tap into new market segments while generating additional revenue streams. The key to licensing is having a registered trademark and ensuring that the licensing agreement has clear terms. Specifically, licensing agreements should include detailed clauses on quality control, marketing standards, territorial restrictions and payment structure. When the only thing that is governing the licensing relationship is the agreement between the parties; a clear understanding is vital.
In a licensing relationship, the brand licensing its mark to the other party has the right to dictate exactly how they want their mark(s) to be used. Specificity as to color, size, font, and overall visual identity should be clearly stated in the agreement. Brands should also implement systems to monitor the quality and market performance of licensed products. Regular audits can provide the brand with certainty that their license is being used in accordance with their brand identity.
H&M has set a benchmark for successful co-branding partnerships through its collaborations with Versace, Balmain and Pucci, just to name a few. These limited collections merge H&M’s mass appeal with the luxury and exclusivity of renowned designers.
In 2024, it was announced that Coty has partnered with fashion brand Marni on various beauty products. The first products are scheduled to be released in 2026 with development and production of fragrances and beauty products to extend into 2040. This partnership allows Marni to enter the beauty market by leveraging Coty’s extensive international infrastructure but retaining its core identity.
A brand’s legal strategy is as important as its creative vision. The above legal strategies create a legal framework for brands to protect their intellectual property and also build a solid foundation for future growth and innovation. A key takeaway from this article is that protecting your brand requires a proactive approach. It requires early intervention and continuous monitoring to avoid infringers and dilution of the mark.
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