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  • Writer's pictureDavid Baker

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

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 4. Never file an application to register your trademark.

I’ve lost track of how many times I’ve heard clients say, “Trademark registrations are a waste of good money. After all, U.S. trademark law allows you to enforce your trademark even if you have no active registrations on file so why bother?”

Then, they go on to say, “Of course, your trademark attorney wants you to register your trademark and she will tell you about how it provides constructive notice of your mark to your competitors, it gives you advantages in court if you have to sue for infringement, and it even provides the basis for your registrations in foreign countries. But isn’t that just another way for your attorney to create more billable hours for herself.”

“And registering your trademark in other countries? Seriously? Why?”

Step 5. Be creative in how you use your trademark.

Client marketing directors or ‘brand mangers’ famously recoil when told to be consistent in how a trademark is used. Instead, they contend that using your trademark the same way every time is boring. Worse still, they are convinced that there’s no reason to use a trademark as an adjective in tandem with the good or service you’re selling. They want the trademark to BE the good or service.

I’ve even heard them explain, “Look at Xerox. Office workers love to say ‘xerox’ instead of ‘copy’ and over time the two words have come to mean almost the same thing.”

When I try to tell them about the importance of properly using trademarks and that the more consistent the use of the trademark, the better able they will be to enforce the trademarks against other businesses that infringe them, they routinely ask, “Where's the fun in that? It's much more fun to change up your trademark every so often, change the font, or the colors or even some of the words. Consumers want to see your trademarks used differently and creatively on your website, in your social media posts, and even in your traditional promotional materials, don’t they?”

No, they do not.

Step 6. Use the trademark registration symbol ® regardless of active registration. I’ve lost track of how many clients have proudly explained that they have liberally used the trademark registration symbol (the letter ‘R’ in a circle) with their trademarks over the years only to have me explain how this one simple act may have ruined their chances of obtaining a federal trademark registration.

“That trademark registration symbol is pretty cool,” they’ll claim. And it was easy to tell the webpage designer and the printer to add it every time the trademark shows up online or on written materials. It was certainly much cheaper and easier than paying a trademark attorney to apply for federal registration. It also saved them the time and money of having to maintain their registration.


Step 7. Never use written license agreements.

Not surprisingly, clients consistently shy away from written trademark license agreements as being “unnecessary,” especially when they the company that will be using the trademark is a vendor or a distributor or even a customer.

Clients justify their reluctance to use license agreements because they tend to “complicate” business relationships, they can be time-consuming, especially if everyone can’t agree on the terms to include and asking for one can make it look like you don’t trust the other side. However, few of them have a defensible response when I ask what they will do when there is a problem with the way a valuable trademark is being used by a third party and there is no written agreement setting forth the requirements for that use.

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