Does it matter where I put the Brand?

Richard Rimer

May 12, 2023

This month marks the 20th anniversary of my first job in the world of trademark. I worked as a law clerk in a large firm during my final year in law school. I was hooked from the beginning.

Looking back, there’s so much I didn’t know as I entered this area of law. I try not to forget how much I’ve learned, and how much I need to share with the average small business owner. Last week I ran into an issue like this: where do I put the brand on packaging?

This stuff matters. How do you make sure the brand is really a brand? You gain rights in a brand by using the brand in commerce, so it is important that you use the brand in a way that the public perceives it as a brand as opposed to informational material, ornamentation or in other non-brand ways.

I have a client who is launching her brand of children’s toys and related items. She showed me the prototype of the packaging for a puzzle, and I was concerned that the USPTO and others would not perceive it as a brand. In her case, the brand was jumbled amongst other words, and it did not stand out. With this in mind, I offer you a quick list of some best practices:
1) Be sure the brand is distinguished from the surrounding text
a) use different fonts, CAPITAL LETTERS, different colors, etc.
2) Use your brand as an adjective
a) Yes: “Buy our Nike athletic shoes”
b) No: “Buy our Nikes”
3) Make sure you use correct notice
a) ® is for registered brands
b) TM is for unregistered brands, or you can use SM for unregistered brands used with services

Happy Branding!