If there’s a truism in building brands, it’s that brands are built over time, not overnight. But there are occasional exceptions, as was almost demonstrated with the racehorse California Chrome (and Smarty Jones in 2004). With no Triple Crown winners in horse racing since the 1970s, when there were three, California Chrome was poised to become an instant megabrand, before falling short in the final race at Belmont. But there is a branding connection here in central PA between Smarty Jones, California Chrome and the world of trademarks and intellectual property. Mike Doctrow, chair of the Intellectual Property Group at the Harrisburg law firm of McNees Wallace and Nurick, led the preparations to protect the trademark rights of both horses as they stood on the cusp of racing history. Last week, Mike took the time to explain the special challenges of protecting a brand before it explodes onto the scene.
Whiteboard: California Chrome was an interesting trademark case because it’s an example of creating and protecting a brand that could skyrocket overnight. How does that change your usual approach to trademarking a brand?
Doctrow: With a typical client, we are asked to carefully search and clear trademark options. Cleared marks go through further research and testing by the client. When the final mark is selected, we prepare a file and trademark application. The client then develops the packaging and marketing materials, which we review for compliance with trademark, copyright and advertising law and any specific industry laws. The process can take months.
In the Triple Crown arena, we are presented with very specific brands consisting of the horse’s name, the design of the silks and the owner’s trademark, which had been in use for several months. Before licensing the brand or obtaining endorsements, we must immediately clear the mark to ensure the owners and their sponsors will not get sued when the mark becomes well-known. We must then immediately file trademark applications to deal with the numerous infringers, copycats and squatters that inevitably appear.With Triple Crown hopefuls, unlike typical brands, we immediately work with media and licensing professionals to develop the image around the brand and to identify endorsement and sponsorship opportunities. Over the past 10 years of representing Triple Crown hopefuls, we put together a team of excellent resources to do this.
Whiteboard: What are the threats to the intellectual property of this “overnight branding” that you seek to minimize when you begin your legal preparations?
Doctrow: We need to identify threats to the brand on day one. So we’ve developed the resources to address this on an expedited basis. The threats may include legitimate companies that have confusingly similar brands, and threats can come from the large number of people that want to take advantage of the opportunity to make money off of shirts, hats, cups and the like, and those who try to register trademarks and domain names to extort money from the rightful owner. We reduce the risks by acting quickly, often overnight, to clear and protect the brand. We also address the risks by acting firmly and decisively with infringers. Finally, we reduce the risks by acting quickly to fill the voids that may tempt others to take advantage.We secure domain names, file trademark applications for basic brands and new brands that are developed (like “Triple Chrome”), and get merchandise on the market quickly.
Whiteboard: What are the aspects that companies most often overlook when protecting (or not protecting) their brands?
Doctrow: Many startups and smaller companies fail to clear and protect their brands because they believe it is expensive to do so. The cost of making sure you can use and register your brand in current and future markets in nominal compared to the cost of having to rebrand your product or business. It’s frustrating when new clients come to us with cease and desist letters, and we have to tell them that they need to replace their packaging, marketing materials and signs.
The other issue we see on a regular basis is companies that fail to adequately protect their brands, particularly in the international market, and therefore lose their rights.
Whiteboard: What are some tips or suggestions for smaller companies that don’t have inside counsel and may not protect their brands well enough?
Doctrow: For smaller companies, I urge them to hire a trademark attorney, and not just a business attorney (or any other kind of attorney) that has filed a few trademark applications over the past few years. You don’t need to go to Washington or Philadelphia, or spend an arm and a leg, to find a good trademark attorney.
Spending a little money now to do it right will help avoid spending a lot more money later on.
The reason to file a federal trademark application to protect your brand is that you are provided with rights across the United States.Absent a federal registration, another company can adopt and use your mark in any area in which you don’t do business at the time.So, file to protect your trademarks.If you do run into infringers, hire a good trademark attorney to address the issue.Don’t send a nasty letter to the “infringer” before having a trademark attorney assess your rights.
As published in the Central Penn Business Journal and Lehigh Valley Business.