Should you trademark your brand before you start public relations?

By Jim James,

Founder EASTWEST PR and Host of the SPEAK|pr Podcast

Imagine monetizing a brand. There’s a lot of time and effort being put into building it, delivering it, and making happy customers anyway, so why not make money from the brand itself? Well, it’s possible and it’s called IP protection. Intellectual property rights are commodities of knowledge-based goods that can be bought and sold, the license of which can be withheld or utilized. The product names, and so on all create intellectual property. They’ve got value, so it’s worth protecting and monetizing them with IP rights. In fact, EASTWEST PR’s SPEAK|pr program which includes the podcast and the PR Mastermind are starting to get some traction in the marketplace, leading to the possibility of licensing this five-stage process which is a series of videos and Masterminds taking place over eight weeks, and it has some tangible brand value and assets that others can learn from. Now that it’s in the top 15-20% of podcasts, it is a brand worth protecting.

Creating assets which are IP-based can happen by way of an intellectual property trademark registration, and it’s companies of all sizes that are doing this. According to Forbes, the brand value of Apple is nearly €150 billion, and it has increased significantly in the last 10 years. Rovio, the Scandinavian creator of Angry Birds, makes over 20% of the company’s revenue with licensing, and many smaller companies do the same. President Trump has even used the Trump name as a brand to license. So, in the world of IP protection, there’s a lot of money trading hands, but it’s also an asset that investors are interested in buying from a company, because it’s a way of monetizing a service, a brand, or a process that a company has developed to do its own business that other people might want to use as well. However, the thing to note is if it’s not properly protected, it can be very expensive. Take Apple for instance. They had to pay $60 million for the IP trademark in China, because another entity had registered the trademark iPad before them.

How to go about trademarking a brand

Intellectual property works on a first-to-file basis, so whoever protects it first gets the rights. There are some 20,000 trademarks registered everyday, amazingly enough. But before doing marketing, the first step is getting the brand registered. In China, there’s a company called Rouse, which is quite big there when it comes to intellectual property registration. There’s also Abel & Imray. One can register a brand as a logo and also as a name, and the description of the product or service that’s being registered apparently can’t be so generic as to be a common term in the general lexicon of language, so it has to be something that is descriptive enough that has relevance and currency in the market, but also something that is specific enough for oneto own. There are also many different classes of IP registration. For instance, SPEAK|pr is classified under class 9, which is instructional and teaching electronic publications and downloadable podcasts, under class 16, because that is protecting handouts, and also under class 41, which is training services or courses for measuring and monitoring educational training programs in the field of communications and marketing campaigns. 

For anything that will be registered, it needs to have a description along with the application, and there is a graphic device as well. In the UK, there’s an official £170 registration fee with £100 per additional class, and Abel & Imray cost about £450-£550 for the service, plus another £450 to handle what may be some objections, because the filing company will check that the brand hasn’t already been filed as one of the 20,000 a day. Once it’s filed, there’s a period of 4-6 months where people can contest the filing. If someone else has a claim, they can contest that it’s already in use. But because this registration is given to those that file first, not necessarily first in use, they would have to prove that they’ve already filed it and that they’re using it actively for one not to be able to trademark that brand.

Why trademarking a brand is good for PR

This IP protection is important in the commercial sense, but also from a public relations perspective, because when sending out press releases, especially  in countries and markets like China, other parties could reuse those. As in the case of Lamborghini or Tesla in China, other people had taken the brand name, registered it, and created a small business around that in a related category, and then sat on the domain name online and the filing. So, public relations really shouldn’t take place unless the brand is registered for IP protection, because it could be giving someone else a great idea of what brand name to register and then they can squat on the business idea and the market that you want to sell into.

IP protection, strangely enough in international public relations, is often not considered fully. People believe that if they’re filed with WIPRO, which is the World Intellectual Property Organization, that they have a global registration, but it’s not the case. A business will still need to file in other markets. However, if IP was filed in the UK with WIPRO, that gives the person who filed the rights to file first in those other markets like China and to claim with due cause that you were the first to register it and also the first people to use it commercially. But again, it’s not enough to just register a trademark. One then has to trade commercially under that trademark for a period of time to make it then a brand that can be defended. 

WIPRO (Photo from Wikipedia)

If a company product, brand, or methodology is not trademarked, then there’s a public relations risk that that brand could be taken and that all the work done, all the press releases, the website, the social media handles may not belong to that company. Entrepreneurs spend a lot of time building brands and once it is successful, they sometimes forget that it becomes something others might want to steal or invest in. At the same time, it’s something that could be monetized for a minimal cost. It only costs £170 to register a domain and intellectual property on the British gov.uk website, but there are a number of sensitivities around the trademark registration, both by classification and wording. Nevertheless, it could prove to be a worthwhile investment to make for the business. If something is worth putting all your time and effort into, then defending it and monetizing it seems like the best possible crisis management prevention program. To put it simply, if you’re building and monetizing a brand, think about how you’re protecting it, and that can be done with intellectual property protection.

This article is based on a transcript from my Podcast SPEAK|pr, you can listen here.

Cover Photo from The Balance Small Business

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