Trademark Law: Protecting the Value of Your Brand
**Author's Note: I am not an attorney. I've spent over a decade working with trademarks, but made the decision early on that law school was a terrible idea for me, so my advice should not be taken as legal counsel. I'm happy to share knowledge and offer feedback, but when it comes time to file or protect a trademark of your own: PLEASE PLEASE PLEASE hire an attorney. You'll be glad you did.**
My first job out of college was a File Clerk position for a multi-national law firm with an office here in Austin. Entry level, had no experience whatsoever, didn't even know what a trademark was. Little did I know that this meager role would spark a lifelong fascination with an area of intellectual property that would come to play a significant role in my professional development.
I point out the size of the law firm not for bragging rights, but to illustrate where the trademark practice of this organization fell on its list of priorities. The firm has dozens of offices around the world, with thousands of employed attorneys, plus even more support staff. The Austin office took up 4 stories of a downtown high-rise, with over a hundred attorneys and comparable support. Our trademark practice: 7 attorneys, a handful of support. Amongst the empire of attorneys and support staff under the firm's banner, only a handful of us managed the sprawling trademark portfolios and litigation of a number of international industry giants.
In my experience, trademarks reside in a similar rung of priority amongst the pantheon of legal concerns entrepreneurs have to face. But just because it's a low priority for some, that doesn't mean it's low impact. On the contrary, when you're dealing with trademarks, you're dealing with your brand, your identity, your positioning; you're protecting the value of who you are, as opposed to, say copyright, which protects the value of what you do.
So imagine my delightful surprise when, in the final semester of the MSTC program, the professor for our business law course introduced himself on the first day of class by making it abundantly clear that trademarks are his personal passion and one of the single most important legal considerations for kids like us. Finally: worlds colliding. I had thought the MSTC program was a way for me to pivot away from trademark law as I moved towards a career in innovation, but I realized in that moment that I could pursue a different path and still take everything I know and love about trademark law with me. To that end, I want to offer a primer on trademarks and why they matter.
There have been some high profile trademark disputes in the media recently. In August, Capital Factory filed a lawsuit against ATX Factory for trademark infringement. In an ongoing dispute between the proprietors of the San Diego Comic-Con and Salt Lake City Comic Con, motions for summary judgment were denied, setting the stage for a jury to decide whether or not "Comic Con" is a generic term (think escalator, or cellophane, which were tied to brands at one point in history). In both cases, I've seen many people jumping to conclusions: "Capital Factory is just bullying the little guy, what do they have to gain?", "San Diego Comic-Con was using it first, what's the big deal?", etc.
It's cases like these that prove how important it is to understand trademark law, not just to protect your business, but to have a clear view of the competitive brandscape. It's important to care about your trademark because your trademark is your brand, and your brand can't always defend itself. Here's what you need to know about protecting your trademarks and your brand.
Use It or Lose It
If you're not actively using your mark, you're weakening your claim to it. In playground terms, if you're hogging the four-square court but not playing four-square, the other kids are going to boot you so they can play. In sandwich terms, if you're two sandwiches away from that freebie on a customer loyalty card that expires at the end of the month and you stop buying sandwiches, when next month rolls around, you've lost your free sandwich.
Not only do you need to prove that you're actively using the mark before it can be registered, you need to keep using it to maintain your registration. 5~6 years after registration, you'll be called on to prove the mark is still in use. 10 years after registration, when it comes up for renewal, you'll have to prove that it's still in use yet again. The cycle continues from there.
There are two important takeaways from this concept: 1) these rules are in place for good reason. Without them, there would be rampant trademark squatting issues and little room for that evolving brandscape; and 2) it pays to be decisive about your branding. You are committing to continue using the mark. If you have faith in your brand: no problem. If you don't, ask yourself (and an attorney) why you're filing a trademark in the first place.
Defend It or Rescind It
It's easy to scowl at large corporations for sending cease & desist notices to anyone who uses their marks without permission, but it's important to understand why they do it before you find yourself in a similar position. Simply put: as a trademark holder, you have an obligation to defend your marks.
Let's look at the examples I gave earlier. Capital Factory, the preeminent coworking / accelerator space here in Austin, filed a lawsuit against ATX Factory for using a confusingly similar name in commerce. I heard this described as a "slippery slope" by the Austin startup community: one lawsuit will lead to another, and pretty soon no one will ever be able to utter the word 'factory' again without Capital Factory swooping in. Well, yes: it is a slippery slope, but it's one that Capital Factory is, in fact, avoiding. If they had not filed the lawsuit, ATX Factory's use of 'factory' in the name of a company that does pretty much the exact same thing as Capital Factory could compel others to do the exact same thing. Capitol (with an o) Factory could come along and if Capital Factory raised a similar suit, they could point to Capital Factory's lax defense of the name when dealing with ATX Factory. Pretty soon, anyone could create a coworking space called ___ Factory and Capital Factory would gradually lose its brand equity.
The battle of the Comic-Cons is a cautionary tale for this bleak, generic future. San Diego Comic-Con ("SDCC") has been around for over 40 years. Its marks are well established and flourishing. But Salt Lake City Comic Con's ("SLCCC") claim that the term "Comic Con" is generic has enough merit to give SDCC something to worry about. SLCCC has accurately pointed out that there are over 100 competitors using "Comic Con" in their name. New York Comic Con, Amazing Arizona Comic Con, Emerald City Comic Con, etc. etc. Their argument is that SDCC has committed genericide (yes, genericide is a real word. ctrl-f the word in the court order and see how many times it comes up) by not actively policing other companies' infringing use of the mark, which has led to the precarious position SDCC finds itself in.
Basically, any time someone is capitalizing on your brand and you let it slide, you're leaving yourself open to someone else doing the same thing and saying "you didn't go after them; why are you coming after me?". The good news is that there's a lot you can do to protect your marks without resorting to legal action. Having done my share of trademark policing, I've learned that most people simply don't know any better. They don't realize that creating and marketing a product called "Pepso Cola" might earn a cease & desist from Pepsi Co. Take an infringement as a teachable moment. Reach out to the other party as a human, not as a legal form letter. Explain a little bit of what you learned in this article about having an obligation to defend your marks, offer alternatives that they can use that aren't confusingly similar to your marks, be understanding, be firm. It sounds easier than it is, especially when you encounter people who know exactly what they're doing, but humanizing your outreach will humanize your brand and prevent you from coming off as overprotective.
Cherish It or Perish It
Trademark ownership is a lot of work. It requires self-awareness, diligence, strong communication skills, and money, but the juice is worth the squeeze. Hopefully you understand how invaluable an asset your brand is by the time you make the decision to file a trademark. That trademark registration is like a suit of armor for your brand. Treat it well, and it will protect you from the elements that would cause your brand harm. Neglect it, and its value and usefulness will rust away.
You'll want to file a trademark as much as you'll want to protect your brand. You'll have to go to certain lengths to prove that you're committed to your brand, but the US Patent and Trademark Office will have your back as a result. With a trademark registration certificate in one hand and a strong growth plan in the other, you'll allow your brand to grow without worrying about someone appropriating your goodwill for their own benefit.
Just one more thing: make sure you're not infringing on someone else's trademarks, and if it so happens that you are, try to remain calm about the situation. And it bears repeating because it's that important: if you do find yourself in that situation, please consult with an attorney.