By ARTHUR GERMAIN //
Last week began with a pleasant surprise: As I drank my morning coffee and reviewed my e-mail, I received a Google Alert for the term “Brandtelling,” a long-held registered trademark for our brand storytelling agency.
At first, I was excited: “Hey, someone has written about our process!” My company had recently released the third edition of our eBook, “Brandtelling for Business,” and I assumed that another publication or blog had mentioned it, just as Innovate Long Island had.
But the pleasant surprise quickly went in a different direction. The Google Alert was for a news release issued by a large, well-known and well-regarded communications firm, which was announcing the launch of its new content-marketing service – which it had dubbed “Brandtelling.”
I experienced a range of emotions, from confusion to resentment to despair. How was I going to respond to this unauthorized use of our trademarked brand?
Arthur Germain: Nice guy finishes first.
As a brand storytelling agency providing a range of brand-marketing services, clients often ask us to develop a “trademarkable” name, tagline or slogan. Our process varies, but somewhere in the early stages we always conduct search-engine research and check the U.S. Patent and Trademark Office’s Trademark Electronic Search System, a database containing records for both active and inactive trademark registrations and applications.
We then determine whether a client’s potentially trademarkable term may infringe on an existing “live” trademark, before handing off our findings to the client’s attorney for a formal investigation and filing.
Which is why I was so confused seeing our trademarked term used in a headline by a company in a similar industry. Did nobody at the firm simply Google the phrase to see whether it was active?
I wasn’t sure what to do, so I did exactly what I tell my family, friends and clients to do when facing a difficult decision: contact an expert for guidance before doing something really stupid. (Write that down, it’s good advice.)
My expert call was to Wayne Ellenbogen, a rockstar intellectual property attorney and partner at Hoffmann & Baron in Syosset. Ellenbogen’s firm works with a variety of clients, from small startups to Fortune 100 companies like IBM and Johnson & Johnson, helping them develop, procure and defend their intellectual property.
He listened to my dilemma and outlined a few likely scenarios. His first question was interesting: “What do you want to happen here?”
I actually had a few options. I could vigorously defend my trademark (“How dare they!”). I could roll over and risk losing the mark altogether (“They’re so big and I’m so small, I could never afford to defend this in court!”). Or I could go somewhere in between (“Are you interested in acquiring the rights to the trademark?”).
The first step Ellenbogen recommended was very simple: write a note to the CEO and other executives mentioned in the news release, alert them to the fact that “Brandtelling” is a registered trademark and politely request they use a different term. No yelling, no threats and – interestingly enough – no lawyers.
The attorney reviewed my note and suggested I include the USPTO registration number and a digital link to our online trademark information. Then off it went.
Top mark: Communication Strategy Group’s registered trademark in action.
Within the hour, I received a call from the firm’s general counsel, their head legal representative, letting me know the firm had erred and would make things right. And they did: They retracted the news release, changed the language on their website and even convinced an industry publication that had covered their announcement to change its digital article (without mentioning the trademark issue).
A few automated websites still show the company’s original release, but Google searches correctly show “Brandtelling” to be our registered trademark once again.
Ellenbogen stressed that the infringing group is not always going to simply apologize and clean up the error. In some cases, he noted, a company may have already made a significant investment in marketing and promotions and will take it all to court – and you’d better be ready to involve lawyers and engage in long negotiations to achieve an amicable resolution.
But in this case, the larger firm had a high level of integrity and respect for the trademark process, making for a quick and happy resolution.
While it’s fun to entertain the idea of a big sale of our prized intellectual property asset, it was equally nice to retain the asset and resolve the dispute without a long and costly legal battle. The general counsel even sent me a follow-up note praising me for being “courteous,” which was also satisfying.
Sometimes, “brute force” is not always the best approach, even if you’re right and especially with delicate IP issues. The bottom line is that a trusted and experienced team – Ellenbogen’s firm, in this case – can evaluate a situation and propose an appropriate resolution that makes more sense for you.
Arthur German is principal and chief brandteller at Communication Strategy Group in Huntington.
