Outside of the branding processes undertaken by trademark professionals, there exists a fundamental fallacy - everyone seems to think that they understand trademarks. From startups choosing to go it alone with their applications to others decrying the need for trademarks at all, confidence in innate knowledge and simplicity is at an all-time high.
The Dunning-Kreuger effect illustrating the somewhat ironic relationship between a complete lack of knowledge being accompanied by extreme confidence is in full swing. The complications arise for in-house counsel when this misplaced confidence is displayed internally. How do we push back against the tide? Joe Quigley of Rivet LLC has some ideas!
Is this a problem you have experienced in your practice?
"I think one of the best things about being a trademark/copyright attorney is that people are familiar with the subjects of your practice. I think that one of the biggest challenges is also that people are familiar with the subjects of your practice. If you practice tax law or bankruptcy law, I think people rely on your answers and your experience because they have such little exposure to those subjects. But, as a trademark attorney, your clients are constantly exposed to your subject matter and they all seem to believe that they know a fair amount about them, whether that is the case or not. Therefore, I think you have to be aware of that and be able to explain some of the nuances of trademark or copyright law, while tactfully pointing out where those folks may have been mistaken.
This is where education can be a key component to your success as in-house counsel. You need to develop interesting, relevant education presentations that help your client (1) understand what you do for them and (2) give them the knowledge to allow you all to work together better".
Outside of your own experience, how prevalent do you think this issue is?
"Because I’ve spent a long time practicing in this area, I’m always curious about how people are using (or not using) trademark law to help their business. It’s very clear to me that there are lots of entrepreneurs out there who do a really good job at branding and building a presence for their product or their service and yet, when I do a quick search to see what they have filed, often times there is nothing on the register.
Also, not infrequently, I will see something that comes up that I think could be a real issue if they were to grow. Lots of smart people start lots of great companies, but too often, trademark protection is an afterthought. Moreover, often the first time they take it seriously is when they have a conflict, and at that point, it’s sometimes too late. I see it as more of an issue for startups than established businesses".
How would you answer the question - “Do I really need a trademark attorney?”
"I think that if you are looking to launch or grow a business and the Brand is an important part of that business, you need a trademark attorney to help you out and guide you. If you have a local services company – plumbing, dog-walking, etc., I think you are OK without a trademark attorney. But if you are building a web presence and are active on social media as part of your brand building, I think it’s important to consult with a trademark attorney as to the best way to proceed. A good trademark lawyer will be able to give you practical advice and for the few hundred dollars or so that you may spend over just filing something with a Legal Zoom type company, you may very well save yourself a lot of headaches down the road.
The other point I would make is that if you get a trademark claim, that is always the right time to consult with a trademark lawyer – not your cousin’s brother’s wife who is a lawyer for the Social Security Administration, but a real trademark lawyer that can quickly assess the situation and give you knowledgeable advice on the best way to proceed. I’ve seen way too many conflicts that got much bigger than they ever should have been because a (non-trademark) lawyer was involved for some time. If you have a problem with your plumbing, you wouldn’t go to an electrician, so if you have a problem with a trademark, consult with a trademark attorney".
The demand for in-house counsel to demonstrate their value and work as a partner to the business they serve has never been greater. TrademarkNow has partnered with Joe Quigley, founder of Rivet LLC for a masterclass in building and developing the unique and diverse skill set required of in-house IP counsel.
He brings over two decades worth of in-house expertise at leading companies such as Walt Disney, NIKE, Liz Claiborne, Kate Spade New York, Juicy Couture, Lucky Brand Jeans, Victoria’s Secret and Bath & Body Works. Today, his firm specialises in providing services to in-house counsel and making their job easier.
Don’t miss your opportunity to benefit from the experience and insights that built his FAST. PRACTICAL and COLLABORATIVE approach to trademark clearance.