By Laurie Miller
Laurie Miller, CDC Fellow Spring 2023, pictured in the UMass Law Library
I recently saw the movie “Air” which is the true story of Nike’s signing of basketball legend Michael Jordan in 1984. Nike was floundering at the time, but the Air Jordan basketball shoe promotion was Nike’s most successful marketing campaign ever, responsible for $100 million in revenue for Nike in its first year alone. At the center of it all is the trademarked logo that Nike still uses today – Michael Jordan jumping in the air with his outstretched hand gripping a basketball, his legs spread wide apart, and, of course, the distinctive Air Jordans on his feet. This logo celebrates Michael Jordan’s athleticism, his greatness and his uniqueness and is an extremely important intellectual property asset to Nike to this day.
Trademarks are very important to brand identity, so obtaining federal trademark protection is imperative to successful marketing and promotion of a product. Consider if Nike hadn’t trademarked the Air Jordan logo. Other athletic product companies could have copied that trademark to market their products – imagine a logo of Patrice Bergeron jumping into the air in a pair of Bauer hockey skates or a logo of Rob Gronkowski jumping into the air in Adidas football cleats. Had Nike not taken the necessary steps to protect their logo, they could have lost an important marketing edge that they gained back in 1984 when they designed the Air Jordan logo.
Trademarking a logo can be a long and arduous process, but one that is necessary to insure adequate legal protection for the company’s intellectual property. There is a lengthy and detailed application to file with the United States Patent and Trade Office (USPTO) along with an application fee of $275-$660. Once you file your application with the USPTO, it will be approximately fifteen months to obtain approval from the USPTO. During this time, USPTO will be reviewing your logo and comparing it to other registered logos and also against logos that are still pending (which therefore, haven’t been formally published in the trademark register) and trying to determine if your trademark could be confused with someone else’s trademark.
The USPTO primarily examines two factors in its determination of the likelihood of confusion between an applicant’s mark and a mark previously registered or pending registration: (1) the similarity of the marks in their entirety, and (2) the relatedness of the goods or services provided. The USPTO also looks at whether the marks are sufficiently similar in terms of their commercial impression such that consumers who encounter the marks would be likely to assume a connection—not whether the marks are distinguishable from one another when side-by-side. Therefore, the more similar the marks, the more similar the goods or services of those individuals or entities must be in order to support a finding by the USPTO that the marks are likely to cause confusion.
It is important to properly trademark any logos which you have been using as part of your marketing promotions. Having a solid understanding of the criteria used by the USPTO to differentiate logos will aid you in designing a logo which will reflect the ideals and aspirations of your product. Remember, properly trademarked logos can save your company money, time and headaches and just make good business sense.