Seth Godin on Trademark?

Posted on March 1, 2010 by Steve Baird

  Thumbnail for version as of 15:21, 6 September 2009  Thumbnail for version as of 14:28, 28 October 2007  Thumbnail for version as of 05:55, 3 December 2007

Seth Godin has an amazing knack for creating and spreading ideas that matter, mostly really good ones, by the way. I always look forward to his daily riffs and I have been known to spread some of his important ideas too when they overlap with things I happen to care a lot about.

When it comes to Mr. Godin's trademark advice, however, I'm not feeling it, sorry (that wasn't an apology either). Some of it is, well, lacking an indispensable quality. Even when it is accompanied by this witty disclaimer: "I'm not a lawyer. I don't even play one on TV. If you rely on my legal advice, you're getting exactly what you paid for."

The problem is, sometimes you end up getting much less than you anticipated and actually end up much worse off, when you follow down even a "free" path based on misunderstandings and misconceptions, at least as they relate to one's legal rights.

I'll never forget one evening watching Geraldo Live during the O.J. trial, more than fifteen years ago, as a young trademark lawyer. There was quite a stir about some trademark applications Mr. Simpson had filed for O.J. Simpson, Juice, and O.J., around the time of O.J. Simpson being charged with the murder of Nicole Simpson. I recall one of Simpson's defense lawyers, the brilliant constitutional lawyer Alan Dershowitz, rebuffing criticism about the trademark filings, unwittingly contending that Simpson never intended to use or benefit from those applications, he simply filed them to make sure no one else could. My jaw dropped when I heard this, because it provided a legal basis to immediately invalidate each one of the applications. In addition, had anyone followed this defensive "legal advice," their trademark filings would have been wasted money and considered invalid and void ab initio, since U.S. trademark law requires that an applicant must have a bona fide intention to use the mark on each and every good and service listed in the application.

Back to Godin on Trademark*, and even more recently, a couple of months ago Seth Godin wrote about how to protect your ideas in the digital age:

One way is to misuse trademark law. With the help of search engines, greedy lawyers who charge by the letter are busy sending claim letters to anyone who even comes close to using a word or phrase they believe their client 'owns'. News flash: trademark law is designed to make it clear who makes a good or a service. It's a mark we put on something we create to indicate the source of the thing, not the inventor of a word or even a symbol.

While there are certainly some greedy trademark lawyers in the world, and some that overreach on behalf of their client brand owners, even honorable and ethical trademark attorneys worth their hourly rate know that federal protection against dilution for truly famous marks was added to U.S. trademark law about fifteen years ago. At least for marks satisfying the difficult fame standard, these kinds of trademarks come darn close to owning the brand name in gross, that is, in connection with any goods or services.

For the garden variety and non-famous trademark, the scope of rights is defined by whether or not there is a Likelihood of Confusion.

With respect to what trademark law was designed for, and while I don't consider this to be a news flash any longer, well prior to dilution protection being added, U.S. trademark law was amended to make clear that much more than confusion as to source is covered. All the way back in 1962 the Lanham Trademark Act was amended by striking language requiring confusion, mistake or deception of "purchasers as to the source of origin of such goods and services." Moreover, a much broader scope of confusion protection was codified in 1989 in Lanham Act Section 43(a), which protects against trademark likelihood of confusion not only as to source, but as to affiliation, connection, sponsorship, association, and/or approval. This additional scope of trademark protection makes perfect sense given the current commercial realities of trademark licensing, franchises, co-branding, affiliate marketing, and OEM relationships.

I'm not saying Seth Godin's opinions about trademarks are Out of Bounds, I'm simply saying some of them are out of date.

With a little luck, and assuming I can get in enough time in front of my Stuart Smalley mirror between now and next week, I'll explore another misconception or misgiving it appears Mr. Godin has about the registration of trademarks:

Some lawyers will get all excited and encourage (demand!) that you register your trademark. This involves paying a bunch of money, filing a bunch of forms and earning an ® after your name instead of the ™. While the ® does give you some benefits by the time you get to court, it doesn't actually increase the value of your trademark. And you can wait. So, when you come up with a great name, just ™ it.

So, stay tuned.

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A Parody Is Forever?

Posted on February 18, 2010 by Brent Lorentz

Recently, a new Verizon commercial caught my eye.  Perhaps you've seen it:

This immediately reminded me of a circa 1993 (has it really been that long?) De Beers commercial (seen here).  Apparently, this is one of at least two Verizon commercials intended to "spoof" some of the classic, well-known commercials from our past.  My immediate reaction, to these commercials was to start brainstorming all of the conceivable bases on which Verizon might be liable given the similarity of its commercials to clearly recognizable commercials from the past.  Under the right factual circumstances, I could see all sorts of claims for unfair competition, trademark infringement, copyright infringement, misappropriation, etc. (not saying those facts exist here).    

AdFreak, a blog which I just recently became aware, described these commercials as "parody."  However, I seriously question whether these commercials would be able to successfully meet the legal requirements for a parody fair use defense.  The fair use defense is a relatively difficult defense to establish, particularly where the "parody" is being used for commercial benefit.  

Moreover, parodies are generally understood by the law to be a criticism of something represented by the underlying material, not merely a clever transformative use.  Compare the above Verizon "spoof" to this, where the use is plainly intended to comment on De Beers alleged enabling of the "conflict diamond" trade.  Or compare it to this "vicious" (WARNING: GRAPHIC AND DISTURBING CONTENT) parody of "overwrought De Beers jewelry commercials."  Each of these uses is categorically different from Verizon's use here.  So, I hope Verizon had something else in its bag of tricks besides the "parody" argument before running these commercials.   

Ultimately, the moral is that its important to always recognize the danger in "borrowing" someone else's marketing concept or intellectual property, no matter how limited or transformative the use.  Additionally, its important to recognize the fair use defense is not always the best shield to protect yourself, particularly if you're involved in commercial advertising.

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A Mother of an Opportunity

Posted on March 24, 2009 by Guest Blogger

Was your mom a multiple serial monogamist? Then bring back those memories of daddy-for-a-day with “Gentlemen Callers,” a new scented candle featuring “a sensual orgy of men’s colognes.”

Sounds like an ad from The Onion, but it’s not. You can buy “Gentlemen Callers” and several other candles from Mother, a New York company that also sells comics, shopping bags and refrigerator magnets.

The thing is, Mother isn’t in the candle business, or the comics business, or the magnet business. It’s in the advertising business – a feisty, independent agency renowned for its creativity.

Now Mother is putting that creativity to use not just on behalf of its clients, but on behalf of itself. Check out Mother Scented Candles here, as well as this very funny 90-second product video.

Creative firms like Mother, and Fast Horse for that matter, typically have been like the shoemakers’ children: great at marketing on behalf of their clients, yet lousy at doing the same for themselves. But that’s changing as a growing number of advertising and marketing agencies are beginning to use their brand-building knowledge to create new revenue streams for themselves:

  • The Vancouver agency Taxi opened Taxi Café, selling Taxi-branded fair trade coffee and snacks.
  • Brooklyn Brothers of New York wrote and published a children’s book, “Gently Elephant!” and created a line of chocolates, Fat Pig.
  • Anomaly in New York created i/denti/tee, an e-commerce play that lets customers emblazon T-shirts with their favorite song lyrics.

Anomaly and other agencies also regularly partner with clients, taking partial ownership of a product or a cut of profits in lieu of regular fees. For example, Anomaly recently partnered with Target on Eos, a line of women’s shaving and skin products that launched in more than 100 Target stores.

I expect to see this trend explode in the coming years, as the Internet has leveled the playing field and agencies are looking to apply what they know to create new streams of revenue. And as this becomes more commonplace in the agency world, liberal arts majors like me would do well to get better versed in sexy stuff like trademarks and intellectual property.

Anyone got a line on some good counsel in this area?

-Jorg Pierach, Fast Horse

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