Trademarks and marketing: There’s room for creativity

Don’t ever go to the supermarket with Stephen Baird.

“I’m the guy who always annoys everyone by picking products off the shelf and trying to determine whose brand it is,” Baird said.

He’s got his reasons. As head of the intellectual property, trademark and brand management groups at the Minneapolis law firm of Winthrop and Weinstine, Baird’s job is to advise marketers on how to introduce products without running afoul of existing trademark holders.

It’s a useful job. If you don’t believe that, ask the creators of Escalator, Trampoline, Zipper and Pilates — all brand names that lapsed into generic use because their creators didn’t effectively protect the brands from infringement.

Trademark lawyers often have a bad reputation among marketers, who think they stand in the way of creativity.

“Typically, marketing professionals don’t want to deal with lawyers,” Baird said. “I’ve heard lawyers referred to as ‘Dr. No’ — they don’t facilitate things, they just get in the way.”

Stephen Baird
Stephen Baird

In an effort to overcome that reputation, Baird’s firm has launched a blog, DuetsBlog, that bills itself as “collaborations in creativity and the law.”

“It’s a much smoother road when marketing and legal types collaborate early in the process, because then they both have a chance to fulfill their objectives,” he said. “Our goal is to have a graceful relationship — hence the name ‘Duets.'”

As a reader of that blog, I’ve found the content lively and engaging — much more fun than you’d expect from a bunch of lawyers. (The most recent post is about a battle between two brands of potato chips.) It’s interesting to follow the musings about products we all know and use regularly. It can be hard for busy professionals to maintain a regular blogging schedule, but I hope they keep it up.

Non-traditional trademarks
An emerging area of trademark law involves non-traditional trademarks. More and more, companies are looking to distinguish their products by trademarking attributes like touch, sound or smell. For example, a liquor company has registered the “velvet touch” of a special wine bottle. Baird has experience in the area; some years back, he registered as a trademark the conical framework of lights above the Mystic Lake Casino.

As you might imagine, the Internet has opened a whole new realm in trademarking and brand protection.

“I like to say that the Internet is the Trademark Lawyers’ Relief Act,” Baird said with a laugh. “The Internet has spawned all kinds of abuses.”

One of the more fascinating areas to me is domain names. We’ve all heard urban legends of people who registered the dot-com names of famous companies in the early days of the Web, then sold them back to the companies for big money. I can tell you that those aren’t all legends. I know a man in St. Paul — a very early computer geek — who scooped up a bunch of names in the ’80s, before the rest of us had heard of the Internet, and has been selling them off ever since.

Congress passed a law in 1999 intended to prevent such “cybersquatting,” but Baird said the action has shifted from selling domain names to monetizing traffic. Now the slick Web operators will register a domain name that’s one letter off from a famous brand name, then sit back and sell ads against the traffic that comes through when people misspell the real brand name during a Web search.

Another area of contention, Baird said, is keyword advertising. Companies will buy the names of their competitors for the keyword ads of Google and other search engines. So, for example, Honda might buy the keyword “Toyota” in Google ads.

When you do a Google search for Toyota, you’ll get a keyword ad for Honda alongside your search results. The courts haven’t concluded whether this is valid or cheating, Baird said. Some consider it trademark infringement; others have decided it falls within the realm of lawful comparative advertising.

So, what does this all mean for Joe and Jane Sixpack? Simple, Baird said: Trademark law is designed to protect consumers, to let them know that a brand comes from a known and trusted source.

“That’s the heart of trademark law,” he said. “We’re all consumers, and that’s what draws me to the area.”

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