November 15th, 2012|
About 6 years ago we got into the trademark business. We did so to secure and protect what we consider valuable branding elements.
One of the first trademarks we received was “Get a Lawyer. Get it Done” which was, and still is, being used by Hughes & Coleman going on 10 years now.
Our most famous — or infamous — trademark, depending on your perspective, is the Bill Berg-inspired “No Fee Guarantee.”
Over the last few years, we gained a lot of experience defending trademarks, especially the “No Fee Guarantee.” However, the most important lesson we have learned is that your trademark is only as successful as your willingness to defend it. Not defending your trademarks means you run the risk of someone opposing your use for exerting a lack of control, and ultimately you may risk losing the trademark itself. All in all we have secured federal registration for 15 cj-owned trademarks.
While we do not consistently defend all 15, when we identify possible infringers, we go after them very quickly. It starts with a friendly cease and desist letter, with a couple of reminders if we are ignored, and ultimately find their way into our trademark lawyer’s hands if needed.
Last January, we encouraged all clients to trademark their firm names. Here is the strategy and tactics behind why we did that:
First, there are numerous search engines that offer keyword advertising services, but today we’re only going to concentrate on Google and its program called AdWords. We’ll use Carter Mario Injury Lawyers as an example.
Late 2011, we started noticing other law firms popping up in the sponsored links when we searched “Carter Mario.” We’re not searching Carter Mario Injury Lawyers because the words “Injury Lawyers” would poison pure search for the name Carter Mario. Other lawyers may bid on the keywords “law firm,” “lawyer,” etc.
When I typed in just “Carter Mario” and a competitor showed up in the sponsored links, those in the lightly yellow color box and those links down the right side of a Google search page, there was only one way that could happen. A competitor was bidding on and buying Carter’s name through Google AdWords.
Once that firm was identified we could pursue them via a cease and desist process. It was and still can be a successful tactic. That was a competitor, but what about Google? When it comes to selling your firm’s name, Google claims no liability. To them, they are just selling words, not actually using your trademark in commerce and violating your property rights. Here’s why. Trademark infringement claims are typically based one of two theories: Confusion or Dilution.
Confusion as to the origin or identity of whom the trademark represents. Or, someone has used your trademark in a way that has diluted its value.
Several companies have gone after Google numerous times in Federal Court using one or both theories. To date, no one has been successful.
I’ve been asked several times, “Why can’t you use Google’s own trademark policy to do something about this?” Google’s only trademark policy is this: If a competitor uses your trademark in a banner ad or in the content of an ad, you can file an infringement claim with Google and they say they will investigate. But this does not apply to keyword advertising.
So to recap: Our initial strategy was to trademark firm names in an effort to stop competitors from buying the name to drive business to themselves.