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Tal Niv

The TM Enforcing Buffoon

Starbucks has just made a complete ass out of itself by sending a cease and desist to a small brewery in Montana for violating its Trademark, FRAPPUCCINO.

Frappuccino Trademark

What the brewery did was name one of its drinks “Frappicino”. This, according to Starbucks’ attorney is likely to “cause confusion, mistake” because Frappicino and Frappucchino are “phonetically identical”.

Why did a standard Trademark enforcement action make Starbucks into a complete ass? Because the brewery responded to the poor sweet in-house attorney’s letter in the following way:

  1. The owner attached to the note a 6-dollar check, which according to him is a regurgitation of the profits from use of the word “Frappicino”. (ouch!)
  2. The owner renamed the beer the F-WORD, and did not keep it to himself. (if there is any term )

As an aside, IMHO, if there is ever likelihood of confusion with Starbucks is for the use of the F-Word

So, yeah, definitely an ass.

My point? TM law is built to make an ass out of you I hate to speak in Starbuck’s favor but if you have TM and you want to keep it, TM law doesn’t really give you any choice but to make a jackass out of yourself.

(Of course, it makes it easy for you if you are already a buffoon.)

Why does TM holder equal total jughead?

  1. Because to maintain your TM, you, as a TM holder have to be able to prove that you are taking pain to maintain it as your unquestionable identifier. This, after all, is the service TM law incentizes you to provide consumers.
  2. now you would think that “taking pain” shouldn’t spell “taking every pain, no matter how harebrained”“. So, if this is where your mind went, it turns out you are wrong: TM law and the tests for consumer confusion have evolved to teach TM holders that harebrained is having basic TM smarts because evidence for a consistent effort is what you have to secure. In other words, it’s stupid to consider whether there’s actually likelihood of confusion, because it might cost you your TM.
  3. In short: Want to stay on TM good side? Enforce-enforce-enforce.

What would I like it to mean to every company’s TM strategy and to a company that exists to support creative collaboration like, ahhmmm, GitHub?

-> TM assets? Who needs it.

I can only wish that were true… Why?

As this case makes obvious, enforcement to no end has two conventionally recognzed costs that are born by every TM holder: First, enforcement requires investment of immense resources, in monitoring for infringement, in sending letters & threatening infringers, in suing, in litigating, etc. Second, because you are enforcingenforcingenforcing, you are constantly doing idiotic things, like blaming small-time breweries that they are passing on as you when you are a coffee magnate.

Then there is a third cost, which is the one that worries me most, that isn’t such a worry for the Starbucks of the world, but is for the GitHub(s):

Active TM enforcement means going after the same ones who are doing exactly what it wants them to do - they are trying to build on top the intellectual investment of others. In other words, they are natural collaborators who borrow the Trademark not because they mean ill, but for the good.

In other words, the GitHub ideal would be to encourage those collaborators, but TM protection makes it do the direct opposite.

What it unfortunately means to a company’s TM strategy?

Well, I remember that I was once naive enough to think that a wise corporate IP strategy could do away with TMs, and that the IP strategist working in-house can reccommend that.

I wisened up since then.

Even for the GitHub’s of the world, it’s

  1. hard to balance out the costs of TM enforcement against the potential benefits of TM protection considering the range of other IP protections that are available.
  2. hard to be a brave enough IP strategist to swim against the stream. In other words, I’m not seeing any other major player giving up this protection, and how can you be confident enough that you are the wiser or that your case is idiosyncratic.

In other words, shrugging off TM protection doesn’t really seem possible, even if you don’t like yourself for it.

To conclude:

That’s the TM game as it is now, and it is costly to Creative Collaboration

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