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Why Marketers Don’t Give Two Hoots about Trademark Concerns‚Ñ¢

Posted in Branding, Guest Bloggers, Marketing, Trademarks

by James Mahoney, Creative director/writer at Razor’s Edge Communications

Okay, so I’ve read a lot of whining and agita about how marketers continually drive trademark attorneys to distraction with un-trademarkable names. And how advertisers drive those same attorneys to that same distraction with potential trademark infringements.

It’s time to let you in on a dirty little secret: we don’t care about trademark stuff. At least not a lot of the time.

Now before you break out the smelling salts, or the torts (aren’t they little tasty cakes, by the way?) or something to stop your palpitating hearts, let me explain a little further.

For big stuff, like our own trademarks or ones we think will really get us into trouble if we violate, then we do pay attention and we do care. Ditto for new things we come up with that we think will have some durability. That’s a key distinction here, folks: things we think will have some durability. Relatively speaking, there aren’t many of them—product names, for example, deserve attention.

For everything else we do, we pretty much know that the Smithsonian isn’t going to be calling us to enshrine the original. We’re also pretty sure that most of the stuff we come up with will live slightly longer than a tsetse fly only if we’re lucky.

That’s why we’re so cavalier about trademarks. Other than observing the big-picture rules (most of the time), we hit the threshold of diminishing return on trademark-related effort very quickly. It’s just not that valuable a use of our time.

Here are a couple of cases in point:

First one: Awhile ago, a fishing lure company, Rapala, ran a billboard picture of a lure with the headline, "More hits than Google." The ad also carried this miniscule notice, virtually unreadable and un-noticeable from a moving vehicle: "GoogleTM is a registered trademark of Google Inc." There is little doubt that it was put there at the behest of some company lawyer. (Incidentally, DuetsBlog raised trademark questions about it, here and here.)

Regardless of why the notice was there—including why the headline and notice had TM next to Google and not ®—what would have happened if it wasn’t? Most likely, nothing. Next to most likely, Google would have pointed out that an ® should be there. Remotely likely, Google would have sent a cease-and-desist notice to stop using their trademark.

So, while the TM and notice arguably honored the trademark (though some may question—and did!—the use of another’s mark in the ad), did the marketer really care about it? No! The headline and visual were terrific. The ad was here and gone in a relative blink. Nobody got hurt. The effort was economical, meaning that nobody at the lure company or Google spent more than a couple of shakes worrying about it. Oh, and DuetsBlog got a good conversation out of it.

Second one: Most campaigns are short-lived, and at least the good ones hinge on a memorable idea. Since we know that something like a promotion theme or sale name is ephemeral, then "due diligence" amounts to a quick google on Google® to make sure we’re not stepping on any toes (or at least, any big-people toes). Or, worse yet, inadvertently mimicking some porn site promo.

Then, it’s off to the races. Though the idea may stick around in peoples’ heads—and, hopefully, will—the campaign is done and gone relatively quickly. So we aren’t overly concerned with trademark niceties.

Finally, there’s the rule about always using the trademark as an adjective. I learned this one first-hand way back when I used "vaseline" in an article I wrote for a local paper. Many weeks later, the good folks at Chesebrough-Ponds, Inc., wrote a letter thanking me for mentioning their product, but pointing out that it was Vaseline® brand petroleum jelly.

And that’s the problem with a lot of trademarks. They get in the way of good, flowing, rhythmic copy. They slow down and complicate the process of producing marketing materials that will be gone in less time than it took to develop them.

So, like the good, law-abiding citizens that we are, we’ll use ’em properly whenever we can, but we also know that in the vast majority of cases, nobody’s going to take us to the woodshed over it.

Well, nobody ‘cept a trademark lawyer, maybe…

  • James, where do I begin?
    Well, first, I’m wondering whether you may have inspired the writer of our favorite comic strip who labeled the trademark attorney as “the most basic figure,” see our About page, here: http://www.duetsblog.com/promo/about/. We do have pretty thick skin, it is an adaptive trait.
    Seriously, we do appreciate you sharing the “dirty little secret” about how some marketers don’t give “two hoots” about trademark stuff. I’ll share one too: Trademark attorneys know and fully appreciate that judges and juries aren’t likely to reward bravado or cavalier infringement of the trademark rights of others.
    More later, but I need to catch a plane home. In the meantime, I look forward to hearing the thoughts of both marketing types and trademark types to this provocative guest post.

  • Anonymous

    As an in-house trademark lawyer, you and your ilk are the bane of my existence. Your attitude might go over better with trademark lawyers if you indemnified for your ill-conceived notions, but you don’t. Instead, you pitch the idea to the marketing team, sell them on what a FAH-BULOUS idea it is, and then you make me be the bad guy when I say that it’s too much risk. Do I let things slide because it’s going to be a short-lived slogan on one billboard? Absolutely, because I am a reasonable business lawyer with a business-friendly attitude towards risk. But what about the product that turns out to be a hit? Are you really so good at your job you can successfully predict which products are going to be hits and which won’t be? I can’t, so I have to plan for the long haul, for the mark that’s used in a national advertising campaign blasted across magazines, web pages, buses, billboards, and used internationally. I’m very risk INtolerant on clearance, because it’s a helluva lot easier to not start using a problematic mark than to have to change it once you do get the letter from the senior user. But I have some yahoo company that is so lacking in creativity it can’t manage to come up with original slogans and names, basically telling my product and marketing people that I’m an idiot, “oh those lawyers.” If you want to be successful in your business, then understand all the interests at stake because setting me up in a conflict with my business makes you no friend of mine. And remember that it’s my legal department that reviews your vendor contract. See if you get hired again if you screw me like that.
    I’ve worked with good marketing companies and bad ones, and I have no doubt which category you fall into. Tip to in-house lawyers – make sure that the deliverable is for names that CLEAR.

  • James Mahoney

    Great minds and all that, Anonymous. I’m gratified that we see things the same way and are on the same page. Let’s review:
    “Do I let things slide [sometimes]…Absolutely, because I’m a reasonable business lawyer…” Ditto for us; that was one point of this blog post. (See the tsetse fly reference.)
    “But what about the product that turns out to be a hit?…[can you predict success?]…I can’t, so I have to plan for the long haul.” Ditto for us; that was the other point of this blog post. (See the “big stuff” and “durability” mentions.)
    So, you see, we actually are on the same page. And, for the record, I also totally agree with your views regarding names that clear and “creative for creative sake and the hell with the business objectives.” But that’s a subject for another post since it wasn’t the subject of this one.

  • If the marketing types and the trademark-lawyer types are going to get into a big fight with one another, is there any way to ensure that they all manage to kill one another off? As a computer geek, I don’t much like either side there.

  • James Mahoney

    Well, Dan, I guess you don’t like:
    A. The people who create the demand that allows you to continue to earn a living by letting buyers know about the products/services they can benefit from that you and your brethren develop or make a living with; and
    B. The people who protect the longevity of the companies you work for, first by ensuring that their market identities and intellectual property–possibly even including your work–are defendable, and then by actually defending said valuables.