What Happens When Your Brand Identity Ends Up in Court
A cautionary tale of the value of Brand Identity Standards
For the past 25 years, I have designed logos and design systems, and written and illustrated countless pages of graphic standards and guidelines. While some may think identity standards and guidelines are a dull and laborious effort, I have been reminded they are an absolutely necessary part of a brand identity program―the more detailed and comprehensive―the better. Creatives sometimes struggle with educating the rest of the organization on the importance of maintaining consistency in graphic standards, but every so often an event happens that reminds us why they are more important than ever.
This story recounts a recent experience involving trademark protection that reinforces the importance of maintaining strong identity standards and provides a cautionary tale that should provide a jolt to the system for any naysayers.
Earlier this year, I was contacted by a former client and asked to provide expert testimony in a trademark litigation case. What I learned is that legal protections are not very straightforward, even though the logos involved in the case–in my view–are virtually identical. See the potential for confusion?
Guthrie Health System became aware of an infringing mark when ContextMedia, sent Guthrie’s CEO a holiday card in 2011. ContextMedia―a healthcare media company that delivers educational, patient-related content to physician practices―was targeting the healthcare market in Guthrie’s part of the country for new business.
ContextMedia’s logo was so similar to Guthrie’s that it was clear to Guthrie’s CEO there was huge potential for both patient confusion and misunderstanding within the community. In response, Guthrie sent a letter requesting that ContextMedia cease using their mark. What followed was a long drawn-out legal process that lasted over two years.
Monigle produced the Guthrie logo, design system, and supporting guidelines and standards in 2001. The program was comprehensive and included detailed documentation of identity use on every form of communication; from business cards and promotional items, to the GuthrieOne helicopter and facility signage. The Guthrie in-house team was trained on the guidelines and went off to market with the new brand identity. And, while there had been personnel changes over the years, Guthrie managed the brand identity program well, aligning with the recommended identity standards. Even with the change of workforce, Guthrie’s goal of building a strong and consistent image remained true as the healthcare leader in the region stayed consistent.
In February 2014, the case went to court. As the lead designer in creating the brand identity and standards, I was called in to give testimony as an expert witness on behalf of Guthrie, the plaintiff. During my deposition, ContextMedia’s counsel was keen to focus on the story behind the Guthrie logo. Why does it look the way it does? What is the meaning behind the shield symbol, the colors, and the shapes used in the design?
This line of questioning suggested that part of the defense strategy was to undermine the Guthrie trademark status. If they could demonstrate Guthrie’s own internal misuse, and/or variations of the symbol that were different from what was originally intended and registered with the U.S. Patent and Trademark Office, then the design protection would be weakened.
After I conducted a thorough review of the identity standards, it was easy to see from the website and current communications that, over the years, Guthrie had continued to produce brand communications “by-the-book”. Guthrie’s respect for the identity policies and logo use left no gaps or loop-holes for the defense to exploit; they could not demonstrate any sort of “self-inflicted” trademark infringement that could compromise Guthrie’s claim.
Finally, after months of deliberation, the court made a ruling in the summer of 2014. In the final judgment, many precedent-setting case references and dissection of the marks were made, but in the end, Guthrie’s use of its symbol and its adherence to the guidelines for the proper use of the mark, bolstered the strength of the Guthrie trademark.
When considering the overall impression created by the mark, the court found the two marks would be confusingly similar to the consumer. The court’s 37 page Opinion/Order boiled down to the fact that Guthrie’s trademark is protected in the markets it serves. While the ruling appears straightforward when considering geographic or market boundaries, it is not clear how it applies to the identity use on the Internet where there are seemingly no boundaries.
Two Lessons Learned
Less is not more when it comes to identity guidelines and standards―producing comprehensive documentation and putting them into consistent practice is one of the most powerful protections for a new trademark.
Since the Internet has no market boundaries, I expect many more trademark conflicts and infringements will surface from all corners of the globe…and, perhaps the days of the symbol design are beginning to wane.
Kudos to the Guthrie team for towing-the-identity-line to ensure the protection of the trademark we helped put in place years ago. As for the Monigle team, we have a refreshed perspective on the extreme importance of well-crafted and detailed identity guidelines and standards.
Here are the full logos with wordmarks.
Can you think of any other similar trademark infringement cases? Let us know through the comments section below or through Twitter @monigle.
Mike Herburger is Creative Director of Monigle’s Design team.