Trademark defenses on the offense
Trademark defenses have been making the news waves recently. It's hard to say if we're seeing a trend towards this, but it is safe to say that the disputes are getting interesting if you like law and branding. Or if you just want to make yourself a trademarks mad libs like I've done with the following header:
This American Sky with Friends
Last week Zynga filed suit in the US against Bang with Friends, alleging that the latter is riding on the coat tails of Zynga's popular "__ with Friends" empire. Zynga will need to show consumer confusion as well as demonstrate that it was the first to use "with friends" as a mark in the US. (Sidebar: The US follows a first to use policy, while Europe follows a "first to file" policy. For more on these policies, keep reading.)
In the UK, Microsoft recently lost a dispute with BSkyB, a broadcaster who used to offer a cloud service, forcing Microsoft to change the name of its cloud service, Skydrive.
And Ira Glass's podcast "This American Life" successfully forced the podcast "This American Startup" to change its name to "American Startup" (funny, I wonder if "That American __" would warrant a challenge?). PRI and Ira Glass also forced "This American Whore" podcast to change their name too, with rather marked civility I must say, as Ira Glass has even helped promote WhoreCast.
Trademark defenses are not new and I really can't say if they're on the rise. Yet one does get the feeling that creativity will face harder and harder challenges as more words, and now phrases, become off limits. So, to help combat that feeling, let me recap a few useful tips I've learned about creativity, trademarks and branding.
BRANDING AND TRADEMARK TIPS
1. Put everything on the table. Then narrow down.
You can use established trademarks like "This American __" as a launching pad for creativity, but new ideas are what you're after. Think big. Think crazy. Nothing is sacred in the creative phase. Get as many ideas as you can, then pare down. And definitely listen to point #2.
2. Do your due diligence.
If you like something you wrote and you think it's super brilliant, chances are good you might have heard it before. I hate to say that, but it's kind of true. And in fact there's a new psychological term for the accidental idea theft: kleptomnesia. But don't take my word for it; read Adam Grant's WSJ article on the matter.
Save your behind by just doing a simple google search for the names or taglines you love. And if you're in the US that, check with USPTO online system.
3. Get to know trademark basics
Harvard has a good overview of trademarks (albeit it's a bit dense). But here are some quickies to note:
First, your business "category" and your geography matter. That's why we have two completely unrelated Delta brands (airline and faucets) and an Apple that sells electronics as well an Apple Bank for savings. And that's especially why it isn't a great idea to use "This American __" as a naming construct for new podcasts unaffiliated with "This American Life".
Second, the US follows a first-to-use policy while much of the world (Europe particularly) follows a first-to-file policy. This means in a trademark dispute the USPTO considers when the item first began to appear in use, such as on a brochure or company sign. Other officials will look to when a company first filed the application. This difference can obviously lead to some challenges, and even further underscores why a Google search is so important.
Third, always phone a lawyer. They generally know what they're doing :)
The real point of the matter with trademarks is that you want to avoid confusing the market. And confusion is what Zynga alleges "Bang with Friends" naming construct causes. And it's what Saturdays Surf NYC will likely say against Kate Spade Saturday (which even I at first thought was a collaboration between Kate Spade and Saturdays).
But moreover, creating a mark that stands out means that you've given your company, your brand—its own life and defined its soul. And that, is the point of a good trademark.
So, in sum, be creative but do your homework. And don't ride on someone else's coat tails.