In May 2023, Google announced expanded support in Gmail for the Brand Indicators for Message Identification (BIMI) email specification, a helpful indicator of an e-mail sender's authenticity. To use BIMI, brand-focused message senders must have a trademark registration, which can take time, but Baker Botts' Branding, Advertising & Copyright (BAC) team has developed effective strategies for legitimate brand owners to secure the required rights and start using BIMI more quickly.
In simple terms, BIMI allows email senders to display their trademark, typically a design mark or logo, in recipients' email inboxes in association with a message subject or preview. Marketers hope that doing so will improve engagement with marketing emails and deliver brand impressions without requiring brands to purchase ad space. BIMI extends the email authentication protocol, Domain-based Message Authentication, Reporting, and Conformance (DMARC), which helps deliverability and defense against phishing and other social engineering email attacks.
Without brand indicators, email recipients see only the sender's avatar, typically a circle with the sender's initials. Unbranded email often does not stand out from other promotions, confirmations, or threads and it is difficult for users to discern legitimate messages from scams. Marketers hope that BIMI adoption will reinforce public trust in a brand by signaling that an organization has taken steps to authenticate its email-sending infrastructure.
Under BIMI, email service providers like Google rely on digital Verified Mark Certificates (VMCs) as proof that a brand is valid and authorized to present logos in email inboxes. But to obtain a VMC, a brand must have a trademark registration from one of a limited number of approved government agencies. Currently, seventeen national trademark offices can be used. (For a complete list, visit https://www.digicert.com/blog/qualify-for-a-vmc-how-to-trademark-your-logo.) Virtually all are in large, industrialized countries and consequently have long examining backlogs. For example, the US Patent and Trademark Office currently needs about eight months for even an initial examination of a trademark application, and in Canada, the wait can be more than three years. For new brands or early-stage companies looking to use BIMI, this just doesn't work.
Germany, however, offers a solution. The German Trademark Office, known domestically as the DPMA, offers accelerated examination provisions that an applicant can invoke with an application fee surcharge of just €200. With acceleration, DPMA asserts that registrations can be obtained in just a few working days, but one month to two months is more typical and six months can be required if DPMA sends examining actions that require replies. As one example, leveraging its knowledge of international trademark procedures, responsive team of attorneys and staff, and curated network of overseas agents, Baker Botts recently received a client request for a new registration, arranged a DPMA filing the next day through trusted local counsel, and received the registration certificate in 40 days. In that period, we also received and responded to minor issues in a DPMA examining action within a single day.
Attention to a few details can increase the chances of a timely and successful result. The mark shown in the DPMA application should closely comply with German application formalities and match what the brand wants to use in BIMI-facilitated emails. Preferably, the mark should include color and design elements, and should narrowly focus on the brand's core goods or services in specific terms. These steps reduce the likelihood that DPMA will cite prior marks as allegedly confusingly similar, which could hold up a registration.
While not instantaneous and while processing times can't be guaranteed, the DPMA route, coupled with responsive and fast-acting trademark counsel, can enable brands to start sending BIMI-enabled messages in as little as six weeks after conceiving a new campaign or brand. For further information, please contact your Baker Botts relationship lawyer or the Firm's Branding, Advertising and Copyright team via the links below.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
