Trademark misconceptions abound
Ever earnest and always thinking trademarkily, friend Erik Pelton proposes “Three Misconceptions about Trademarks”:
Since I began working in the field of trademarks I have seen and heard a lot of myths and misconceptions about trademark protection. Here are some of the most common ones:
“Trademark protection will cost my business a lot of money, and we can invest that in more important ways.”
“We didn’t protect the trademark when we started, so now it is late.”
“I have a trademark registration, so I can stop anyone from using the name.”
OK, so here’s me now — far less earnest and also I think about other things. But here’s what I think about Erik’s thinks, plus some of my own.
He’s 100% right that the last two are commonly-held, and that they are misconceptions. As to number one, it is written a bit broadly — “protection”; “a lot of money”; “more important” — so in theory it can always work. But there are times when it is not a misconception to say that startup capital could be spent on better things than trademark… registration.
To be fair to Erik, this is the whole of his first point:
This misconception is wrong because (A) trademark protection does not have to cost a lot of money, especially when working with a flat fee boutique firm, and (B) the expenses of re-branding, or dealing with a trademark dispute, are far greater than the investment in protecting and building a solid brand foundation, and few things are more valuable to most businesses than their brand.
I see what you did there! But of course Erik knows that (A) “trademark protection” is not a synonym for “registration” — and regarding “protection,” of course, no one can disagree. It does not have to cost a lot of money to protect it — or even to register it, especially when working with, well, Erik Pelton, which I heartily recommend. And as for (B), well, yeah, whatever. Cost effective, better now than 10 times more later, of course. Of course!
But what if I told you I disagreed with this part of it:
[F]ew things are more valuable to most businesses than their brand.
Because I kind of do. Oh sure, we’re hedging again — “few things,” “most businesses.” But as a general proposition, and as popular as formulations such as this are in the trademark world I so very much love and inhabit, as a commercial lawyer I know and serve many, many businesses whose brands mean very little to them. They make special widgets. Or they buy and sell them better, faster and cheaper. They operate under a bewildering assortment of names.
I could go on.
Instead, I will offer some of my own common trademark misconceptions, not all of which are misconceived by prospective clients but are misconceptions all the same. Being me of course I won’t stop at just three either!
Here are LIKELIHOOD OF CONFUSION’s Top Ten Misconceptions about Trademarks!
10. Brands are always uber-important to businesses
9. Trademark surveys provide reliable data about whether there is a LIKELIHOOD OF CONFUSION in a trademark case
8. Consumers are confused by luxury counterfeits and are really grateful we’re helping them avoid heartbreak when we get them off the market
7. Online sellers are mortified at the thought of profiting from the sale of counterfeit goods
6. Trademark law protects all trademark claimants equally, regardless of size or wealth
5. Anyone who is admitted to the bar of any damned state absolutely should be fiddling around with registering trademarks
4. LegalZoom is not practicing law when it practices trademark law, because that would be wrong
3. Proof of actual confusion is the magic bullet of proving a LIKELIHOOD OF CONFUSION
2. EVERYONE reads this blog
And the number-one Misconception about Trademarks from the LIKELIHOOD OF CONFUSION™ blog is…………
10. I absolutely want to set up dozens of important half-hour meetings with prospective corresponding trademark attorneys from every colorful land in the globe at the INTA annual meeting!!
The misconceptions could be all mine, of course. It would hardly be a first.