Osvaldo AmaralTranslated originally from Foco America magazine on 03/26/2018 By Osvaldo Amaral

Branding/marketing and trademark protection strategies are essential and must be aligned to ensure the success of a Brazilian company in a such a sophisticated and competitive market like the US market.

In this context, branding is the process by the which the name of a product/service or a company is communicated in such a way that the company is able to differentiate its products and services from the competition by creating a bond with its customers. The aim of branding is to create customer loyalty and it does so by positioning the company in the marketplace. Branding is usually made of a part or the totality of a trademark name.

On the other hand, a trademark represents the image or identity of a product or service and is a signal that distinguishes goods or services among others. A trademark also plays a pivotal role in the branding/marking strategy of the company as it builds a reputation-defining a certain image of the product or service and enables it to become a tool for licensing, franchising and even financing procurement.

Likewise, a trademark may be represented by words, letters, numerals, pictures, shapes, colors, logotypes, labels and, in less traditional forms, by three-dimensional signs (e.g. the shape of products or packaging), and even by audible (e.g. sounds) and olfactory (e.g. the smell of a perfume) signs. As a trademark can represent a valuable intellectual property asset for a Brazilian company with sights to enter the US market and encourages companies to invest, maintain and improve the quality of a product or service, it is paramount to ascertain that the trademark is affirmatively available for use, exploitation, and registration in the US before launching it in the US market and using it in a company’s branding/marketing strategies.

To determine the availability of use, exploitation and registration of a trademark in the US, it is important to take into account first that there are five trademark categories: (1) trademarks, (2) service marks, (3) certification marks which are used to certify that a product or service complies with determined technical specifications and norms, notably related to the quality, nature, material used and employed methodology, (4) collective marks which are used to distinguish products or services by members of a certain entity, and (5) well known marks. In addition, trademarks are classified between 34 different international product classes and 10 different international service classes.

When developing branding/marketing strategies for a Brazilian company’s product or service entry into the US market, it is imperative first to select a trademark of product or service, be it words, letters, numerals, pictures, shapes, colors, logotypes, labels, which are not generic or descriptive of the product or service and, thus, which have inherent distinctiveness. An example of a generic trademark is the trade name CHAIRS to sell chairs. An example of a descriptive trademark is the trade name SWEET to sell chocolates. On the other hand, examples of trademarks that are inherently distinctive include KODAK to sell cameras, APPLE to sell computers and SUNNY to sell heaters.

Secondly, it is advisable to select a trademark which is easy to memorize and pronounce and which fits well to the product or image of the Brazilian company. It is common, for example, for a Brazilian company which seeks to enter the US market to use trademark names in its products or services in the Portuguese language. In this respect, for a US consumer, having a trademark name for a product or service in the Portuguese language can not only be difficult for the US consumer to memorize the name of the product or service but also may be hard to pronounce and even remember the image or identity of the product or service.

Once the Brazilian company has selected a trademark which has inherent distinctiveness, is easy to memorize or pronounce and fits well with the product or image of the company, then it is essential to determine whether the chosen trademark is not identical or likely to lead to confusion among consumers with other trademarks being used, exploited and/or registered in the US. In this stage of the selection process of a trademark which has everything to succeed in the US market, a meticulous search must be carried in several federal, states and private databases like, for example, the one from the US authority in charge of processing and granting trademarks, in this case, the United States Patent and Trademark Office (USPTO), to diminish the risk and ascertain that the trademark contemplated for use, exploitation and registration by the Brazilian company is not identical or likely to lead to confusion among consumers to one or more trademarks already being used, exploited and registered for products or services in the US market.

In Part II of this series of articles dealing with the conquering of the US market aligning marketing/branding with trademark protection strategies, the trademark registration process of a trademark before the USPTO will be discussed.