Establishing an effective level of trademark protection for a fledgling beauty brand is a delicate balancing act of limited resources. While most companies see value in clearing their preferred names for use, the resources required to obtain official trademark protection can seem daunting. For most companies, business realities dictate that a brand secure protection in only a select few jurisdictions at the outset and table the rest until the company sees success. The calculus is very different for celebrity backed beauty brands. These companies enter the market under a spotlight that other companies don’t and while celebrity brands often don’t start out with a significantly higher budget than their competitors, broader trademark protection must be considered at an earlier stage in the company’s development.
The A List
When considering a trademark strategy, perhaps the most challenging category of celebrity beauty brands are those founded by true A-Listers, those people who are global household names. Many of these founders have legions of fans and followers long before they have branched in to beauty. These brands are often developed under extreme stealth mode and it is during that period that a trademark strategy should be put into place. Most countries in the world operate under a “first to file” system whereby the first person to file a trademark application is the first to get the rights. Any person paying attention to the news who is able to beat a celebrity brand to their local trademark office stands to profit from the registration in the form of sale to a third party, sale to the company itself or even establish their own line of infringing or counterfeit products. Saving money on the front end by limiting trademark filings can result in overspending later to secure rights that should have been the brand’s to begin with. As a result, the list of trademark filings for this category of brands should be significant. Using a combination of filing methods to take advantage of various priority filing dates and filing treaties can limit the overall fees and space them out over a period of time.
The Niche Influencer
Today’s influencers don’t always need to have massive followings to capitalize on their name in the beauty industry. People who appeal to an important subset of customer can see great success with their beauty brands. While these companies may not need to explore trademark protection in as broad of a territory list as their A-List competitors, understanding the niche and making sure trademark protection tracks is extremely important. For example, a founder who is starting a beauty line focusing on certain skin types or tones will want to seriously consider the list of countries where the most people who have those characteristics live. If a founder is an athlete, consider countries where their sport is particularly popular. Even if a brand is starting in only one country, locking in a thoughtful list of expansion countries protect the brand from nefarious actors and will ultimately make the brand more valuable for future investment and distribution partners.
The Regional Celebrity
Many popular brands are started by people who are famous in a specific region of the world and after establishing a following there turn toward expansion elsewhere. For these brands to position themselves for global success, early thought should be given to gaining protection in larger markets such as the US, European Union or Middle East.
For most beauty brands, there is a set formula and basic timeline for establishing trademark protection. For brands whose reputations are connected to their celebrity founders, special consideration must be given to the founder’s overall level of fame and core customer base to avoid roadblocks to expansion and growth of the brand.
Written by: Kelly McCarthy
