Amateur trademark filings, gauzy brand aids
A very popular post around here, based on server logs and SEO power, is this one: Trademark do it yourself? In that post I dissect an article by a bright, well-meaning fellow who wrote about how he, reminiscent of Woody Allen’s clever plan to “beat the medic,” determined not to pay for some trademark lawyer to help him obtain a trademark registration. He crows that he figured out how to do it himself, and indeed did it himself, and see?
My response: “A homemade trademark registration — or even one cranked out by Legalzoom or Trademarkia — could be good for your business. But unless you’re very, very fortunate, if you ever want to make use of that piece of paper, it’s more likely to be good for mine,” i.e., as a litigator of trademark claims. Because, as I explain, that registration may not be what you hoped for. Garbage in, garbage out kind of thing.
I’m so clever. But I probably conceded too much, because in fact a large percentage of do-it-yourselfers waste a lot of time on the process of finding out that they didn’t get a registration they were actually entitled to get, legally speaking, because they didn’t know what they were doing. I suppose I took that tack in the original post because I wanted to rebut the presumption that you can’t argue with “success” — obtaining a registration — by demonstrating that this only true if you have properly defined “success.” And just getting “a trademark registration,” without expert guidance, may not be the success it seems to be.
Now, however, we can back it up a bit. Via Cohen the trademark attorney, I found this post on the Brandaide blog here are the five reasons your trademark registration will be rejected:
1. Failure to Search.
2. Filing to Protect a Descriptive “Mark.”
3. Improper Use on Your Website.
4. Filing too late.
5. Confusing color versus black and white design mark filings.
Those are the reasons, not the blog post — the author, Cheryl L.Hodgson, explains these points in detail.
A couple of quibbles. If you’re a regular reader, you’ll know I’m going to sic on number 4, “filing too late.” My view is that this is almost never a problem, because trademark rights are based on priority of use, not filing or registration. If anything people spend too much early-stage money on “trademark work,” as I explained in criticizing a like suggestion by another trademark lawyer whose work I respect, in this post from a while ago.
The other quibble is that, somewhat ironically, it’s not immediately clear from perusal of this attractive, snazzy and informative blog what or who “Brandaide” is. The “About Us” page does not seem to illuminate the matter, which is ever worse. So, scanning… there is a link to a law firm, Hodgson Legal, in the right-hand nav bar… and several clicks down the line gets you to Cheryl Hodgson, Esq., an experienced and able practitioner of intellectual property law.
And there is good stuff here, including an interesting post that answers the obvious question, called “Brandaide® does not equal Band-Aid®.” It explains how Cheryl worked out registering the name Brandaide as a trademark for her blog when there is, out there, Band-Aid® out there, and the association obviously not being coincidental.
After some tussling, “we entered into a consent agreement,” she reports, “in which I promised I would never attempt to play upon Band-Aid in my marketing efforts, and of course I was not going to market plastic adhesive bandages.” Who knew J & J were such pushovers? (Okay, besides the Red Cross.) I assume they’re not, but that this was a good bit of lawyer by Brandaide to overcome via settlement what would seem to have been a pretty strong trademark dilution claim.
Anyway, all this lead me to the assumption that the “us” which “About Us” is about is the blog, is what it’s about. Which is fine with me, but, you know… branding?, I guess.
Well don’t be so quick to assume!
I couldn’t help but wonder how long ago this BAND AID® / BRANDAIDE® business had gone down, seeing as how I missed the whole thing, and this wonderment was piqued by the fact that all the posts on the blog are undated. Grumble. (Yes, if you think I’ve been hinting “consultant-generated blog” here, you’re right. But I think the content here is real.) So I ran a search for the BRANDAIDE® registration. And it turns out that (a) this all happened quite some time ago, and (b) I’m still confused about About Us. See, there are Cheryl actually has two registrations for BRANDAIDE®. One is a November 2008 registration for, basically, a blog. Which I am all in favor of.
But there’s also a 2010 registration for BRANDAIDE® covering “Consulting services in the field of managing intellectual properties; Business marketing consulting services; Creating trademarks for others; Services relating to the analysis, evaluation, creation and brand establishment of trademarks, trade names and domain names; On-line advertising and marketing services.” So maybe that’s the “us.” Something different from the law firm, I guess. Something branded and, it seems, something plural (“about us”; “Brandaide experts provide commentary, news, and knowledge”; “General Counsel. Advisors. Trust us to help build your brand” — indeed, the blog includes interviews and contributions from others.)