Imitation is sometimes considered the highest form of flattery, but when applied to trademarks, this couldn’t be further from the truth. Not long after the “No Fee Guarantee” first went live on Bill Berg’s spots in January 2008, word spread quickly through the legal community, and copycats were aplenty. Seven years later, our enforcement efforts are still going strong.
Inspired by collaboration with Bill Berg, the “No Fee Guarantee” was born as a unique and distinctive way to market a “no win, no fee” arrangement. Right from the start, we felt we had something special—something that needed protection from competitors to maintain a marketing advantage for our clients using the “No Fee Guarantee.” Within a few weeks of Bill Berg’s spots hitting the air in San Francisco, we filed for federal registration as a trademark. The process wasn’t easy, and it took a lot of time, effort, and legal maneuvering to achieve our goal, but we received our first of two federal trademark registrations on January 19, 2010. The first registration was in the “Legal Services” category, and the second was in “Advertising Services.” From that point on, we geared up, got aggressive, and went “infringer hunting.”
After five years, hundreds of letters and emails, a multitude of phone conversations, numerous insults, and near-constant denials of infringement, we can proudly claim today that we have stopped 199 law firms from using the “No Fee Guarantee” without approval. Believe me when I say I have heard every excuse for why firms think it’s okay to use it, and I’ve been the recipient of some colorful comments from infringers. My favorite? After answering the phone one afternoon, the first thing I heard was, “Who in the %&#@ do you think you are, son?” It was a short, not-so-sweet conversation, and it proved ineffective in detouring us from our mission to stop the copycats.
The battle for compliance and to assert our intellectual property rights continues to rage on. By the time you read this, it’s likely that we will have crossed the 200-firm milestone. However, we just recently acquired another enforcement tool for our arsenal—a new status designation for our registration. The federal government now considers our “No Fee Guarantee” trademark “incontestable.” This simply means the threshold, or burden of proof, is extremely high for anyone wanting to challenge the validity of our trademark registration, which brings me to my second most favorite comment from an infringer: “Son, my friends and I have plenty of money and will spare no expense in canceling your registration if you threaten me.” I’m not quite sure what the deal is with me getting called “son”, but it seems to be popular conversation tactic.
So, how do we do we enforce the “No Fee Guarantee”? Each month, we systematically conduct an online search for infringers, while also keeping a watchful eye on competitive spots from various markets through AdScope. Occasionally, we’ll receive reports from clients with sightings in their own markets, which is very much appreciated and encouraged. Regardless of how we find infringers, our compliance crusade marches on five years after receiving our registrations. There have been hundreds of imitators—199 who failed—and I’m sure more will try. But there’s only one original “No Fee Guarantee”…and we will protect it.
