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  • Writer's pictureDavid Baker

How to drive your trademark attorney completely bonkers in 10 easy steps - Part One

Orange County Lawyer magazine published my article, How to drive your trademark attorney completely bonkers in 10 easy steps, in its May 2022 edition. The article is serialized here as follows:

Last Friday, I was at my local brew pub hanging out with friends after a long week at the office. We were sharing war stories and griping to one another about how our clients, customers, and patients often refused to take the advice they were paying us to give them.

“Why do they come to me for advice, if they’re not going to follow it?” The European automotive engineer asked the group. “I mean my time sure isn’t cheap and my advice is almost always spot on. Change your oil and filter on a regular basis or pay me to fix your Jag when it conks out.”

Nodding in agreement, the dentist in the group griped, “Brush and floss. Floss and brush. Is that really so hard to remember? And yet nobody does it. I’m so tired of asking patients, ‘Do you floss regularly?’ and knowing the answer even before they blatantly lie to me about it.”

Setting down my glass and wiping the suds from my lip, I chimed in, “I hear you. But I don’t think any of you has it as bad as me. Do you think anyone follows the advice of their trademark attorney?”

“My clients all seem to think they know all about trademarks and there’s no need to listen to me about what to do or not to do with them. I sometimes wonder if they don’t just do the opposite of what I recommend. In fact, I’ve come with a list of things that business owners can do to drive their trademark attorney completely bonkers.”

Step 1. Pick a trademark that is as generic as possible.

My clients will often tell me that the most powerful trademarks are those that use common words and that are as broad as possible. For example, if you sell cars, you should call your car sales company something broad and ambiguous like “WE SELL FAST CARS.” Or if you make great-tasting cookies, your trademark should be “GREAT TASTING COOKIES.”

When you look around at other companies and their trademarks, they ask, it’s hard to understand why a consumer electronics company would use a popular fruit as a trademark or why an online search engine would use the word for a really, really big number as its trademark. They should have called themselves “Consumer Computer Co.” or “Search for Stuff Online Here.”

Of course, they couldn’t be more wrong.

Step 2. Use the same trademark as your company name or your product.

Others will argue that its confusing for their customers when their trademarks are different from their company name. And those same clients will argue that their product names should be the same as their company name, especially software companies, because it makes it easier for customers to remember. So, too, it’s much easier to use that same name on their websites and in their social media and on all of their marketing materials. Heck, it’s even better if the trademark simply describes the service or the product.

It saves money, it saves time, and it really isn’t that hard to understand, is it?

Step 3. Make sure your trademark is similar to your competitors’ marks.

Many clients worry that distinctiveness is way overrated. Besides, we all know that there are only so many words in the English language and everyone wants to use the same words to describe the goods or their services they sell within their respective industries. And by using the same words as everyone else it makes it so much easier for consumers to know what product they’re looking at (a car or a cookie), where it came from it (some car company or some cookie company), and why they should buy it (it’s fast or its tasty).

As an added benefit, if your trademark is similar to your competitor, it makes it much easier to promote it. Just copy your competitor’s advertising and insert your trademark.

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