Manage Your Trademark Portfolio Strategically
Tis the season to give. The perfect gift delights and continues to remind you of the giver’s loving care. The perfect gift keeps on giving.
Isn’t that what a trademark does? It’s an asset with the potential to be valuable indefinitely, being used over and over again, often increasing in value with age and use. In this respect, it’s unlike most other corporate assets (except trade secrets). The inventory of tangible assets is meant to be depleted as they are sold e.g. cars or computers when sold offer a one-time contribution to the bottom line. Patents and copyrights by statute expire.
But a trademark has the potential to live forever, as long as it’s properly used and renewed. This makes it potentially very valuable. Long after any patent covering the active ingredient in TYLENOL expired, this well known mark remains valuable by continuing to distinguish Johnson & Johnson’s headache cure from those of its competitors.
The significant value is true of all the famous marks especially on view during the holiday season: the double C on the Chanel handbags, the Tiffany blue on its boxes, and Burberry plaid on raincoats. Good marks don’t wear out, in fact their value increases over time. They are assets worth taking care of and protecting.
Which brings us to slogan, THE GIFT THAT KEEPS ON GIVING. It was registered as a United States trademark in 1927 by RCA’s predecessor and recently expired. In Canada, it is still a registered mark owned by Thomson Multi Media for phonographs and records. It is a wonderful slogan that captures in suggestive language the gift of playing music over and over.
May the magic of giving be with you this holiday season!
IACC/INTA- 4 take aways
Boston May 2010
Point 1/IACC: U.S. government is ready to collaborate with industry to shut down counterfeit activity. This was demonstrated by largest attendance ever at IACC conference to hear Victoria Espinel, United States IP Czar, Intellectual Property Enforcement Coordinator in Obama administration.
Point 2/IACC There was an interesting debate in one session between two difference corporate approaches to combatting counterfeit activity: Offensive vs. Defensive. Offensive uses a variety of techniques to avoid risk of counterfeit activity vs. Defensive uses criminal justice system once the crime has been committed to go after offenders. It would be interesting to see an ROI for two different approaches.
Point 3/INTA I kept running into patent lawyers at INTA. Then it became obvious; trademarks are growing increasingly more important in our global brand driven culture. In-house IP counsel are using integrated approach (trademark, copyright, patent) to make the most of their valuable innovations.
Point 4/IACC-INTA In the best companies, IP legal and brand integrity professionals talk to one another. No corporate silos.
Interactive Trademark Mapping
The mapping applications on your iphone and blackberry are tantalizing. 
You can play games, find friends at the local bar, pick a new restaurant, or get directions to your next job interview.
It’s a sign of the times that a team of trademark professionals and computer scientists in Madison, Wisconsin created a trademark mapping program.
So what does this mean?
Typical maps even those on your phone show a single data point, the location of a restaurant.
But MapWise for trademarks goes beyond that. It has a trademark specific database that gives the map its power. You can drill down to get a meaningful picture about where there are registered filings in Class 12 for that mark. Now that is actionable data! The distributor in Chile knows the company can stop an infringer because the company owns a registered mark in Chile. The General Counsel immediately has an up to date picture of the progress in securing marks all over the world for the new product roll out.
MapWise for trademarks is not just about mapping your trademarks. It’s about giving you insight into how your trademark filings protect your global brands.
Susskind’s Death of Lawyers-Trademark lawyers should embrace the change.
Richard Susskind’s book, The Death of Lawyers has been getting a lot of attention lately. An INTA thread on LinkedIn had at last count 40 comments on the book. The nationwide layoffs of partners and associates as well as reduction in associate salaries bear out Susskind’s prediction that systems using technology with less costly workers and the laymen’s use of on-line self help tools are replacing the jobs of traditional lawyers. The title of his book is an exaggeration- he recognizes the need for wise legal counselors who can guide their clients.
So what is the emerging role of a trademark lawyer who wants to survive and not die the legal death that Susskind predicts?
The only possible answer is to embrace the change.
Whether you work in a law firm or a corporate legal department:
- Identify technologies that either replace what you do, or help you do a better job. The legal industry is ripe for innovative solutions. Business intelligence has been applied in many corporate environments but somehow avoided the legal departments. That’s changing.
- Know what your client really cares about. It’s brand protection. In the era of on-line advertising, the brand is even more important. If you understand this business objective, you can provide legal counsel that justifies the legal expense of your services or salary.
- Offer wise counsel. Understand how ICANN works and is changing because securing the right domain names is critical to search engine optimization. Know how to use trademark registrations to shut shown cyber-squatters and counterfeiters to protect the bottom line. Advise on how copyright protection can be used as an alternative to protect designs in a new branding campaign. No piece of software can perform the kind of complex analysis that identifies changes in the law, aligns the law with corporate goals and identifies alternatives to guide smart decisions making.
MapWise for trademarks is technology that doesn’t replace you but makes you smarter. It gives you insight into trademark data that pouring over spreadsheets or docket reports just can’t. Its dynamic mapping function helps you generate a meaningful picture to share with your business clients to assess risk and cost effectively protect global brands.
How is a trademark like a hot dog?
Tim, an employment lawyer recently asked me, “What does MapWise for trademarks really do? Why does a company need it?”
I said, “ I am sure that the hot dog company you represent knows exactly how many hot dogs it has in the warehouse, how many kinds of sausages it sells and the due dates by which they have to be sold. “
Tim, “Yes, that’s true. The hot dog company has a good system in place to manage its inventory. It’s critical to its business success.”
I replied, “Trademarks are like hot dogs. Smart owners manage their inventory of trademarks in the same way they manage meat, or buns or other hard assets. They manage their inventory of hot dogs and trademarks for business success.
We see large and small companies either not managing their trademarks by sticking legal correspondence in a file and only acting when their lawyers call them, or keeping a list that only one person in the company has access to or understands. It’s not their fault, they haven’t had an easy to use tool.
MapWise is a simple intuitive tool. You don’t need to be a lawyer to use it. So the hot dog company can now strategically manage its trademark inventory just as effectively as it manages its hot dog inventory.
In this difficult economy, MapWise pays for itself for quickly by reducing reliance on outside counsel, offering insight into which marks to keep and which to let go, and avoiding lost sales revenue by seeing where a company needs to establish foreign trademark protection.”
“So now the hot dog company can be as smart about its trademarks as it is about its hot dogs. ”
NFL Trademarks at the Supreme Court
At the United States Supreme Court this week, the NFL asserted its right to a merchandising monopoly- seeking to maintain its right to grant Reebok exclusivity to make hats with the logos of all 32 NFL teams, locking out American Needle, a privately held company in Illinois which had been making hats with NFL logos before 2000.
The justices seemed to have fun talking about sports. Breyer talked about baseball instead of football because he knows that sport better. Scalia talked about jerseys and helmets. Sotomayor got serious, distinguishing between making money and competing on the sports fields.
The most surprising comment came from Michael Levy, counsel for the NFL, stating that “[T]rademarks aren’t worth anything.”
So what was all the fuss about if trademarked logos don’t have any value? The licensing revenue represents billions of dollars.
It’s really about the monolopy power of the NFL, argued Drew Brees, starting quarterback for the New Orleans Saints in an article in the Washington Post, “If the Supreme Court rules that the league’s 32 organizations constitute a single entity that is exempt from antitrust laws, players will lose this important leverage.” http://www.washingtonpost.com/wp-dyn/content/article/2010/01/07/AR2010010702947.html
Far be it from MapWise to weigh in on antitrust matters.
Respectfully, however, MapWise Software would like to correct Mr. Levy, the NFL’s counsel. Trademarks do have value. They are icons for customers. The football team trademarks are especially valuable because of fan loyalty and billions in dollars of revenue. Otherwise, this case would never had made it to the Supreme Court.
