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Three Reasons Why Aggressive Trademark Protection Hurts Sustainability

| Thursday April 7th, 2011 | 8 Comments

Trademark controversy has been all over the place lately. The case that’s making the rounds most recently is over the term Urban Homesteadingtm, which is being aggressively protected by the Dervaes family. Most of the press has, at best, questioned the family’s motives and at worst called them “ridiculous” “victory garden thieves.”

Behind the scenes, a whole host of other trademark debates have been taking place, right in my inbox. I’m not going to name names, but organizations large and small—ones you’ve definitely heard of and ones you definitely haven’t—have been writing to us at TriplePundit to demand that we add that little tm to their names, or better yet remove the use of their names all together. This seems quite odd to me because in the instances in question, we’re generally giving these folks positive press.

The most recent example, and the one which prompted this post, comes from a tiny organization that has trademarked a common adjective+noun combination in our space. I’m not going to link to their website, because when I went to check it out yesterday I saw that the company’s webpage was displaying a visitor counter and they had an impressive 15 visitors. If I were to link to them it’s likely we’d give them the traffic boost of the century. I made the edit requested by the owner, who wrote back thanking me and inviting me to join a linked-in group. Pretty odd and clueless, right?

For you, Mr. adjective+noun, and all you other would-be threatening letter writers, here are three reasons why behavior like this is really hurting our movement:

It stifles collaboration

One of the reasons I am so passionate about sustainability is because it represents a new way of doing business. TriplePundit is a small firm and every day we collaborate with other small companies on projects and ideas. We couldn’t do what we do without partners. It’s a new world, one in which new innovations are developed every day. That means that occasionally a brainstorming session leads to someone actually turning an idea we collaborated on into an initiative or company all on their own. I applaud that. I’ve got my hands full with what I’m working on now, and if you have the time and means to turn one of my creative rants into a working prototype, more power to you.

A world with agressive trademark protection is a world where people are scared to share. If you’re scared to share your ideas for fear that someone might steal them, fewer ideas will be voiced and fewer great companies will be created.

It actually dilutes brand value

As a media company, we have the ability to give publicity to great sustainable companies. We’re glad to do so. It’s our little way to help the movement, and the goodwill from helping other companies in our field always comes back around to help us as our network sends us leads, potential writers and even prospective sponsors.

My first contact with Mr. adjective+noun was not so positive. His company might be the next big innovation, but it’s going to take a lot for me to overcome my first glance and really spend time getting to know it. Frankly, there are a million entrepreneurs out their with more collaborative attitudes and I’d rather put my working hours into supporting them.

Brand value is an ephemeral thing. It’s very difficult to build a good reputation and very easy to destroy it. Threatening letters from lawyers are a good way to give potential partners a bad taste in their mouths. Just look at Monster Cable, a company which has surely spent hundreds of thousands of dollars on trademark protection, only to be banned by tech blogs like Engadget for their agressive and idiotic approach to brand management.

It’s a huge waste of time and money

The most amazing thing about trademark protection on the internet is how time consuming it is. Think about how many blog posts are published every day. Some poor intern, marketing assistant, or legal department flak is charged with reading through all those google alerts every day, finding the email of someone at the blog, drafting a letter, citing the example, and following up to be sure they’ve complied with the cease+desist. If the blog owner ignores the threatening letter, next up is a more threatening letter, perhaps drafted by a real, expensive, lawyer. If the blog still doesn’t comply, it’s lawsuit time.

We’re talking about thousands of employee hours spent on something that really just dilutes brand value.

What if firms put that staff energy into more positive pursuits like sustainability initiatives and the promotion of them, and perhaps a bit of collaboration? I bet the employees would be a lot happier with that kind of work and the firm would get a ton of positive press for their efforts.

Don’t get me wrong. I know trademarking has an important role in our world.
It protects consumers from confusion and can protect brand value when handled correctly. We’ve got our trademarks in place just like any wise company, and if anyone else sprung up calling themselves Triple Pundit, they’d hear from us.

With that said, am I too idealistic to think that sustainable businesses should take a long view on how they protect their brands and build value? What do you think?


▼▼▼      8 Comments     ▼▼▼

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  • http://www.laconialaw.com Mike Persson – NH Patent Attorney

    I am an intellectual property attorney and I agree that many trademark owners are becoming too zealous with their policing efforts. Policing serves an important function, as the unchallenged use of the same or similar marks by others can be used by an infringer to argue against a likelihood of consumer confusion. It can also be used to show that a “mark” is actually a generic term that cannot be protected. However, unless you are fighting against a mark becoming generic, the use of trademarks in blog posts and other commentary is not likely to have much impact on a trademark owner’s rights. I just think that the Internet, and especially Google Alerts, has made it so easy to find all of the uses of trademark that owners are shooting off letters before they really think about whether the potential benefit outweighs the negative consequences.

    • Jen Boynton

      Hey Mike, thanks for commenting! In the case of Mr. adjective+noun, the phrase he’d managed to trademark is actually incredibly generic (it’s a combo that in use throughout the site and all over the web). Given that he’s a small, apparently new, firm, I’m wondering if the USPTO has gotten a bit to lax in their handing out of mark protection. I can’t imagine that he was able to truly demonstrate unique first use of the term. Just as in the case of “urban homesteading” TM, the term in question has been in use for decades. Have you noticed the bar lowering at all?

      • http://armistead-law.com JArmistead

        Mary, the applicant for a trademark registration like this doesn’t necessarily have to show a unique, first use, but that the term is descriptive and not generic, and if it is descriptive, that the descriptive term has acquired secondary meaning–that is, consumers associate the term with the applicant. This is what the Dervaes family did. They put together a letter to the trademark examiner identifying press and advertising where the term is used in connection with their business. The examiner felt that the evidence of acquired distinctiveness was enough. The Dervaes also signed a sworn statement that Urban Homestead was used continuously and exclusively in commerce by them for the previous five years. A trademark examiner doesn’t challenge that sworn statement. The best bet is for other parties with an interest in the term to formally oppose the application during the registration process or in the case of Urban Homesteading, try to get the mark cancelled like the EFF is doing now. The problem in matters like these, is that parties that have motives other than profit but have an interest in opposing or canceling a trademark registration aren’t likely to have the resources to do so. The system is better suited for existing brand owners who have the money to monitor trademark registration and then oppose or challenge those that might harm their brands.

      • http://www.laconialaw.com Mike Persson – NH Patent Attorney

        As is the case in many arenas other the USPTO, how low or high the bar is set depends upon the person conducting the examination. I have filed applicaitons for a number of marks that I felt would at least warrant an initial objection based upon descriptiveness sail through without a problem, and have also had others in which the USPTO Examining Attorney has objected on extremly agressive and overeaching grounds. However, in general, I think that the Examining Attorneys do a pretty good job. In cases like the “urban homesteading” mark, which has been in the news lately, it is likely that the applicant made certain representations to the USPTO and, under the current system, the USPTO has to accept these representations. The “safety valve” in these cases is the opposition process, which allows other users to challenge the registration. Unfortunately, most people arent aware of it and those who are aware of it are often deterred by the legal fees that are incurred if one is brought.

  • James Bertini

    We filed a petition to cancel the Dervaes Institute trademark “urban homesteading” today. -Denver Urban Homesteading

  • iklych

    “Urban homesteading” is registered in Supplemental Register. It is a step to register it abroad, but doesn’t give exclusive rights in USA. Dervaes try to take rights that they don’t have. It looks for me almost anything can be registered in Supplemental register – trademark attorney let it do it, because it doesn’t provide any rights and not supposed to damage anybody. Dervaes did. We publish all documents about this case on http://www.denverurbanhomesteading.org. Please, be free to use anything from this website if you need it as example.

  • GFD

    There is an organization in Canada that has trademarked the phrase “Earth Day”, and selectively tries to prevent other organizations from using the phrase to describe activities or events organized around the long-standing internationally recognized day. A bit ridiculous, in my opinion.

  • Marilyn

    http://dervaestrademark.wordpr
    The article info is incorrect esp about the term urban homesteading
    which originally meant rehabbing old homes and is not the same as the
    Dervaes trademarked term.