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  • Writer's pictureDavid Baker

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

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:

Step 8. Don’t create a written set of guidelines for how to use your trademarks.

Then, when I try to explain that trademark license agreements give the licensor the leverage they need to ensure that their trademarks are used properly and consistently, I also explain that a good license agreement should include reference to a strong set of trademark usage guidelines, preferably the same one that the company uses for internal purposes. The guidelines set out in writing exactly how trademarks should be used and establish the parameters for their use, creating an important standard for usage both internally and in the marketplace.

“But,” clients will retort, “that sounds expensive and complicated and time-consuming. And besides, do you really expect my employees, let alone my distributors, to actually follow a set of rules about how to use my trademarks.”

“Yes,” I say. “I do.”

Step 9. Let the “Trademark Police” enforce your trademarks.

My favorite piece of advice that clients love to ignore is to “police” their own trademarks. By this, I mean that they need to regularly research third party use of the same or similar trademarks and to let me know so that we can take appropriate action. With bigger clients, I even recommend using a trademark monitoring service.

But clients often scoff at this advice. Instead, they lay out their own enforcement strategy.

“We’ll just call the Trademark Police when we find out someone has been misusing our trademarks. The Trademark Police can handle it. Don’t you have their phone number?”

No. I don’t have their number. There are no Trademark Police.

Step 10. Never ask your trademark attorney for legal advice BEFOREHAND.

Honestly, I’ve lost track of how many clients have said to me, as I’m sure others have said to their trademark attorneys, “I wish I had called you before (a) we selected our trademark, (b) spent a ton of money promoting our trademark, (c) we went to the industry trade show and saw another company already using the trademark, (d) we received this ‘cease and desist’ letter, or € all of the above.”

If they have an explanation for not contacting me beforehand, it usually involves the rationale that attorneys are notorious killjoys. They love nothing better than telling their clients what “not to do.”

By not calling me first, I have to tell them, you’ve only made matters worse.

Suddenly seeing that my glass was empty as were all the others on our table, I realized I’d gone on longer than I’d intended.

“Sorry, everyone. Next round is on me.” I apologized and signaled to the barkeep.

Our dermatologist friend was the only one who hadn’t had a chance to be heard.

“Finally, it’s my turn,” she said, slightly exasperated but enjoying the attention. “And, best of all, my stories have got all of you beat by a mile.”

“Worse than not flossing or changing your oil or misusing your trademarks?” I asked. “How so?”

The barkeep set down our new glasses, each filled to the brim, and the dermatologist leaned in with a wry smile.

“How many times have any of you had to give your advice when your clients were disrobed?”

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