Creating a Marketable Law Firm Brand & Protecting Trademarks

Laney M. Silverman, Principal + Designer

Mark Punzalan, Chan + Punzalan

Participation please ...This is an interactive workshop.

Not a long, boring talk.

Interrupt and ask questions please.

Today’s topics● Introductions● Why should you care about branding?● Why The Design Boutique, Inc.?● Top 5 essentials to create a successful brand● Protecting and trademarking your Law Firm Name● Trademark Basics and Examples● Naming your Law Firm● Powerful examples | before and after● #1 takeaway and why● Q & A

IntroductionsLet’s go around the room.

Please stand up and introduce yourself by stating:

● Your name

● The Name of your business

● A recent win (an accomplishment) that you have experienced at work

Why should you care about branding?● Branding is one of the most important aspects of any business.

● It gives you an effective edge.

● A brand tells your customers what they can expect from your products and services.

● It differentiates your offering from those of your competitors.

● It shows your values.

Your brand is derived from who you are,

who you want to be, and how you want people to perceive you.

Why The Design Boutique, Inc.?● Established The Design Boutique in 2003● Owner is a native San Franciscan ● Over 500 satisfied clients● 35 clients in 2017● #1 graphic designer in San Francisco on Yelp ● 78 5-star Yelp reviews

Top 5 essentials to create a successful brand1. Know your people.2. Be real.3. Position yourself.4. Design effectively.5. Be consistent.

1. Know your people.● Who are you targeting? ● Good business is built around meaningful relationships. ● Identify the needs, desires, and wants of your customers.

2. Be real.● What inspired you to create the business or product?● Avoid superficial values or vague statements.● Focus on your values and product benefits and not what your competition doesn’t do.

3. Position yourself.● Start with authority and clarity. ● Be an expert.● Set the standard for future interactions.● Communicate clearly what you or your product does.

4. Design effectively.● Be recognizable.● Be stylish and unique.● Evoke an emotional connection.● Design to impress in your niche market.

Good design firms don’t let Law firms put the Golden Gate Bridge on your homepage.

(or Any Bridge…)

5. Be consistent.● Marketing material representing your brand should have the same look and feel.● Your website, business card, and email signature—and everything else that visually and digitally

represents your business—should match.● Messaging and written content about the product or company should be the same.

2.0 Protecting and Trademarking Your Law Firm Name

• Law Firm Names -- Surnames

• Distinguish your firm from other firms

• Goodwill and name recognition

• Avoiding trademark disputes or lawsuits

Trademark Basics

•Word

•Phrase

•Symbol or design (or combination of the above)

Identifies and/or distinguishes the source of the goods of one party from others.

Trademark Examples

• Word - “McDonald’s”

• Slogan - “I’m Lovin’ It”

• Logo -

• Combination -

Naming Your Law firmThis is a hot topic.

Should your firm be 4 last names listed or words or phrases

What do you think is more memorable?

Silverman, Goldman, Wu, Chang and Patterson Partners

vs Silver Law Group

Logotype vs textA logotype / with an illustrative element or words written out in aerial?

What do you think is more memorable?

Holland Law llp

Which company / logo looks like a higher hourly rate?Which logo shows higher quality and provides better service?

A Marketable Business Name

George Eastman (founder of Kodak) says names should be:

• Short• Vigorous• Incapable of being misspelled, and• Mean nothing.

“Legal” Strength of Mark

Fanciful (e.g., Exxon)Arbitrary (e.g., Apple)

Suggestive (e.g., Microsoft)Descriptive (e.g. Windows)

Generic (e.g., E-Mail)

State Bar (CA) rules on your name

“Group” - One other employee (non-attorney ok)

“Law Offices” - More than one address

“Associates” - Two other attorneys employed other than shareholder

Law Corporation - Must designate in name

Basic Trademark Principles

• Federal registration not required

• First to Use Owns It

• Must be Unique (“Distinctive”), or Have Earned Customer Recognition Through Time

• Trademark Owner Can Enjoin Another’s Use for “Customer Confusion.”

Surname (Last name) as Trademark

• Can you trademark a surname? It depends.

• Primarily a surname? Must show acquired distinctiveness.▫ Extensive use and promotion; consumers associate mark with applicant as

source of goods▫ Five years

• Evidence▫ Advertising▫ Dollars spent on promotion▫ Consumer statements indicating recognition

Reasons to Register Trademark

• Notice to users that mark is unavailable

• The right to put ® after the mark

• A legal presumption of ownership

Should you register law firm name as trademark?

• The cause of most trademark litigation is the “likelihood of customer confusion”

• Trademark registration process test whether marks are confusingly similar

• Not always a clear analysis

Customer Confusion?

Customer Confusion?

Customer Confusion?

Discussion | Original or redesign?

Which logo do you like better?

A. Original B. Redesign

Which logo do you like better?

A. Original B. Redesign

Which logo do you like better?

A. Original B. Redesign

Pitfalls of failing to protect brand

• Marketing off your goodwill

• Tarnishing your brand

• Taking away clients ($$$$)

Branding: Powerful Examples | Before & After

#1 takeaway and why Take 3 minutes to write down your #1 takeaway from the presentation.

We will call on a few people to share.

Thank you + Q & A

Laney M. Silverman | Principal + Graphic DesignerBoss@TheDesignBoutique.com

The Design Boutique, Inc. 650 California Street Floor 7, San Francisco, CA 94108