March 13, 2019
Creativity in the social media age
When a company has a dispute over a piece of intellectual property, lawyer Stephen Baird is often the first line of defense. His reputation is stalwart in the realms of patent law and trademark protection. He’s also well-known for using plain English rather than what he calls “legal mumbo jumbo.”
They should think more broadly about what could serve as a trademark.
A trademark can encompass any number of things. I helped Mystic Lake Casino register the light beams that form the teepee above its casinos. Owens Corning trademarked the color pink in connection with its insulation for use in the housing industry. Things like that. Just don’t try to trademark descriptive language. Avoid the D word; wipe descriptive out of your vocabulary.
You want to be in the business of suggesting a product, not describing it. Be in the business of metaphors. The law rewards creativity.
When you’re dealing with trademarks, generic terms are part of public domain. Anyone can use a generic term without risk of being sued.
When you’re dealing with non-traditional trademarks, like distinctive product shapes or perhaps a color, functionality will kill them. So, if your advertising touts the utility or function of a claimed trademark, that’s like saying you don’t own anything.
Lexus went to the patent and trade office and registered a trademark in the spindle shape of the grille on one of its cars. Their advertising touted the shape as functional, which puts the validity of the trademark at risk.
You have to be aggressive. Chick-fil-A offers a good example. A Vermont artist trademarked a T-shirt with the phrase “Eat More Kale.” Chik-fil-A objected, saying it was an infringement on its slogan “Eat More Chikin.” It wasn’t. They walked away. That was an example of someone punching a trademark bully in the nose.
Think of it as the opposite of real estate. You can’t measure the property line of a trademark and know when it has been crossed. Someone with authority has to confirm where the line is. That’s what the court or trademark office does. It’s a very nuanced field, requiring special expertise.
I tell people to visualize a target that has concentric circles with a bullseye target. If you’re not vigilant about protecting your scope of rights, it’s inevitable that others will nibble at the edges in the bullseye. Eventually all you will be able to protect against are identical uses.
To protect brand investments and reputation, prevent confusion in the marketplace, and keep competitors at a safe distance.
By having systematic watches in place to monitor what’s going on in the trademark office. There are computerized trademark watch services you can set up.
True. The worst thing you can do is fire off demand letters without knowing all the facts. Confirm first who has priority of rights.
Distinctiveness. That’s key. Whether a distinct logo, a distinct word, a distinct color pattern or a distinct product shape. That’s what you protect.