Recently, two financial services companies decided to fight over which one had the superior right to the mark PENTAGON. This dispute raised the question about whether the U.S. Federal Government owns any rights to the PENTAGON name. The Department of Defense is identified as the owner of record for 88 live federal trademark registrations and applications. Of these 88 records, only one is for a mark containing the PENTAGON term.
This particular record is a pending application for DEPARTMENT OF DEFENSE PENTAGON & Design with “dishes; mugs; coffee mugs; earthenware mugs.” This application published for opposition on January 2, 2018, so there are a few days left for anyone to either oppose this application or at least file an extension of time to oppose.
There are 34 applications and registrations on the Principal Register for marks containing the term PENTAGON, and some of these marks are clearly trying to associate themselves with the PENTAGON in Washington, DC. For example, there is a registration for PENTAGON PROTECTION UNITED STATES & Design (the design being a pentagon).
It is interesting that the Department of Defense chose to register the mark DEPARTMENT OF DEFENSE PENTAGON & Design instead of just PENTAGON. Certainly, when consumers refer to the building, the majority of people will call it the PENTAGON not DEPARTMENT OF DEFENSE PENTAGON. However, we can speculate that the reason was the Department of Defense would have been unable to defeat a smaller company that has prior rights in a PENTAGON mark for either identical or related goods or services.
Setting aside the issue of trademark bullies that act in bad faith and Section 2(b) of the Lanham Act that prohibits the registration of insignia of the United States for the moment, the law rewards businesses that register their marks early, which is something behemoth organizations like the Department of Defense have to live with. That is why the trademark battlefield can be a great equilizer.
You worked hard to develop a list of names for your business and searched TESS for each one or used BOB to make sure one or more were available to you. You then filed a trademark application for your mark with the United States Patent and Trademark Office, and received the coveted Certificate of Registration. That certificate looks so perfect and the official seal shines in the light that you decide to frame it so that you can enjoy it from time to time when you pass in and out of your office.
All we can say at BOB is, big mistake. Enjoy the accomplishment, but then get to the business of policing your trademark rights. Here are five reasons why you should implement a trademark enforcement strategy:
- Trademark rights are dynamic. As companies using similar marks for related goods or services enter and exit the marketplace, your trademark rights will expand and contract.
- A thoughtful enforcement strategy will prioritize potential targets, which reduces wasteful spending and time. A trademark owner is not required to take on all comers at once, so getting the most egregious cases out of the way first is important.
- Successful enforcement actions build on themselves. Especially public cases with the Trademark Trial and Appeal Board, future companies will see your successful enforcement actions and will voluntarily choose to adopt a different name to avoid a potential dispute with you. If you stay committed to the enforcement strategy, the number of annual enforcement actions will diminish.
- It will contribute to creating a strong brand because an enforcement strategy positively affects the conceptual strength of a mark.
- It makes expanding product lines under the same mark more easy because you have already cleared the space for the expansion. This means less in search costs when expanding a product or service line.
Start thinking about enforcement during the examination process of your application so that you can hit the ground running when that new registration certificate issues.
We previously discussed the principal that brand drives revenue. And the way brand can drive revenue is when consumers readily recognize your company as the source of goods or services. What we did not discuss is that consumers can rely on more than one mark to identify your company’s goods or services. The more touch points you have with a consumer, the more options you have to market your goods or services. The greater the options for marketing, the more opportunity consumers have to engage with your brand.
Here are the five steps to follow to develop a strong trademark portfolio:
- Secure the name covering your entire business first. A mark that is used across product and service lines is called a house mark. It is the mark consumers will likely encounter the most.
- Protect the design element of the house mark. Every business should have a visual element as part of their brand. The graphic element can become as recognizable as the name of the company itself.
- Protect the stylization of the name. However, only do this if you have a particular stylization that is unlike anything used by your competitors and you believe consumer may rely on the stylization alone to identify your services. If this is not true, then don’t waste your money on protecting the stylization of your name.
- Protect the main slogan for the company. Catchy slogans, like the graphic element of a house mark, can become as recognizable as the name of the company too.
- Prioritize protecting the names of individual goods or services. This decision should be based on revenue. The more revenue one good or service generates, the stronger a case can be made for protecting the elements of that product mark the same way you would protect the house mark.
Use these steps to develop a policy your company will follow when developing new products and services. Like most business tasks, building a robust trademark portfolio requires a sound strategy and the discipline to carryout the strategy.
The Legal Executive Institute is holding its annual Managing Partner Forum. Several interesting nuggets have been revealed so far, but one of the more interesting stories was a firm that used technology to review contracts in M&A deals, which resulted in reduced costs of 30% and increased margin to 70%. A 70% increase to margin is astonishing, and demonstrates that technology can have more than a marginal impact on the economics of a service business. So why are more branding firms and law firms using technology in their practices when they can?
It goes back to the old adage that if it ain’t broke, don’t fix it. There definitely is some wisdom in this saying, but at what point does the old adage give way to more profitable businesses? Learning to use a new tool or adopt a new process does involve a learning curve, but in today’s competitive service business environment, any tool that can improve the business should be seriously considered.
Technology gives back to a firm its most precious resource – time. With extra time, comes options. A firm can use technology to redeploy resources to more productive, client related tasks. It can allow you take on more clients, and engage in more business development. Or, it can let you take a nap. Layer in the cost savings of using technology, and the choice of whether to innovate and incorporate technology into a service business becomes an easy choice.
Americaninno.com reported that Twin Cities co-working company COCO became part of a new franchising concept that blends co-working with hospitality. The partnership also involves the adoption of the FUELED COLLECTIVE mark and the jettison of the COCO mark.
COCO was founded in 2010 in St. Paul MN and grew to 5 locations. COCO offers private and semi-private workspaces for businesses with employees, as well as co-working memberships for solo-entrepreneurs, freelancers and remote workers. Having been to a COCO facility, the environments are bustling with hard working and creative entrepreneurs. Accordingly, the mark COCO became readily recognizable and positively associated with entrepreneurship.
Not knowing much about Fueled Collective, we checked out their website. The concept seems more like a hangout as opposed to a shared working space. According to its trademark registration, FUELED COLLECTIVE started two years after COCO was founded in 2012.
Because of COCO’s success, the partnership would likely benefit from its continued use of the COCO brand. Accordingly, finding some way to associate the two brands would be the best decision. For example, retaining the COCO mark but identifying below it something like “a Fueled Collective location.”
There are numerous books and articles written on the subject of brand valuation. Each book or article offers its perspective on the proper method for valuing a brand. However, there are three general types of calculations: Market-based valuations, cost-based valuations, and income-based valuations. Knowing the approximate value of your company’s brand is nice to know for purposes of your balance sheet, but more important to the number is what factors contribute to achieving a high brand valuation and what that high brand valuation means for your business.
The reason any brand has value is because of its consumer recognition abilities. It is the ability for consumers to readily recognize a particular brand and associate something positive with it that leads to increased conversions at the point of sale. If a brand is easily recognizable and has positive associations with consumers, the company will have more sales, which leads to a high brand valuation regardless of the valuation method employed.
How do you create a readily recognizable brand? You must develop a sound identity and marketing strategy, but any strategy must start with naming. You need to spend the time selecting an interesting name and making sure that name is legally available. Then, you have to develop a reasonable enforcement strategy. It is difficult to be recognizable if you co-exist in the marketplace with companies having similar names. Finally, you need to commit to creating a phenomenal experience for your customers. Working on these factors will help you achieve the goal of having a high brand valuation.
The question about whether to conduct a global trademark search must start with following the money. By following the money, we mean where is your business making money and how much money. Too often companies are persuaded to file applications for their marks in countries where the make little or no sales. The only time it makes sense to file in a country when a company has little or no sales is when that country is on the Department of Homeland Security’s list of top counterfeiting countries. Then a registration in that country can be an important to combat a counterfeiting problem.
Otherwise, the cost to obtain and then maintain a registration may out weigh the revenue generated from any given country and would certainly out weigh the cost to litigate a dispute should one arise.
Since the majority of countries do not require use to acquire trademark rights, it begs the question of whether it is worth paying for a search in a particular country or simply let the foreign trademark office to do your bidding for you. If as a company you are on top of the marketing plan, any trademark filings you do should predate the actual sale of the product in a given country by a healthy date. Granted, some foreign countries are slow to review applications, but not all of them are slow.
If the foreign country reviews the application before you start selling there, then the cost of the application is either about the same or less than the cost to search in that country if it turns out there is conflicting mark already registered. And is the company really going to change its global branding plan because one country is problematic? Probably not, unless that country is forecasted to big a large market for the company.
Like most cases, when it comes to searching globally, it will depend on the business and anyone telling you that in every instance you must search globally is not being straight with you.
Last week after the Minnesota Vikings historic defeat of the New Orleans Saints, BOB wrote that Paul Allens iconic call “Minneapolis Miracle” needed to be protected as a trademark. Specifically, BOB wrote “The Minnesota Vikings organization would be wise to file intent-to-use applications for the ‘Minneapolis Miracle’ and ‘Minnesota Miracle’ covering a lengthy list of goods. As of the date of this post, this is something that has not been done, yet.”
On January 20th, ESPN reported that the Minnesota Vikings filed trademark applications for MINNEAPOLIS MIRACLE and MINNESOTA MIRACLE covering “more than 100 items, including football helmets, watches, golf bags, bowling bags, bathing suits and parkas.” This is exactly the right move for the Minnesota Vikings because the MINNEAPOLIS MIRACLE or MINNESOTA MIRACLE will take its place next to iconic catch phrases as the HAIL MARY, MARCH MADNESS, and DO YOU BELIEVE IN MIRACLES.
As a Minnesota company, you can’t fee anything but proud when the Skol chant spontaneously erupts in a suburban restaurant or an office in downtown Minneapolis. Like the 1980’s US Olympic Hockey Team, this Minnesota Viking Football team has united a state unlike this company has ever experienced. Even though the Vikings will not be Super Bowl Champions, what the 2017 Vikings have done will never be forgotten.
Great season Vikes, and heres to the 2018 season not starting soon enough.
The process of finding the right name can be tough enough, and then you add the complexity of finding the right name in a saturated market. Operating in a saturated market makes naming more difficult because it is more difficult to find a name that no one has yet to claim as their trademark.
When dealing with naming in a saturated market, it is best to think about coining a new name or using an existing term in an unconventional way (i.e., APPLE for computers). Coining a new term does not guarantee availability, but the chances of the term being available are definitely increased.
When you embark on the journey to create a new name or use an existing term in an unconventional way, it is important to consider what meaning consumers may associate with your mark. It would be a big gaff to create a new term only to have an appreciable portion of your target audience attribute something negative to it.
However, sometimes you do need to push the envelope to find the right name. And so long as the name is not offensive, having a little shock value may impart the bit of memorability you should be looking for in a new name. As with most things, having some patience will go a long way in the naming process, but especially if you are operating in a saturated market.