What Sochi Can Teach About Trademarks
(as published in Entrepreneur)
What This Means To You
- A trademark is the focal point of your reputation and is worth protecting and investing.
- If a mark is not actively policed, companies risk confusing customers and diluting the power of the mark.
- Think ahead and obtain protection for your trademarks in other markets.
On any list of politicians who have transformed themselves into a discernible brand, Vladimir Putin would be near the top. Putin himself traveled to Guatemala seven years ago to personally pitch Sochi as the site of the 2014 Winter Olympics. His pitch impressed the International Olympic Committee (IOC) and brought the 2014 Games to Russia’s largest resort city.
From NPR to Fox News, Putin has meticulously crafted an image that demonstrates he recognizes the power behind a strong brand. If there is any other institution that recognizes the value behind an effective brand, it is the IOC.
In 2003, the IOC filed a European Union-wide trademark application for "2014" covering goods and services in more than 25 International Classes, and it obtained the registration in 2005. If this sounds like the meticulous planning of a zealous brand owner—perhaps an overzealous brand owner—remember that the IOC manages some of the strongest brands in the world. Perhaps, even stronger than Putin.
The IOC’s brands are so strong that, every year, it must combat a phenomenon called ambush marketing. This year, the IOC accused The North Face of ambush marketing after it launched its International Collection. Some of the items in this collection—labeled "village" wear—are decorated with the Canadian flag or various countries’ team colors and often feature a patch bearing the symbol "RU 14." One t-shirt in the collection featured the date of the opening ceremonies. Other items featured a map of the world with a red star marking Sochi, Russia. Among other things that tied the line to the Winter Olympics, The North Face catalogue stated that the collection "captures the international spirit of the Olympic Games."
Because the IOC enters into millions of dollars’ worth of licensing agreements with official sponsors, it must take any ambush marketing seriously. Which is why the Canadian Olympic Committee filed a lawsuit against The North Face in British Columbia in early February.
While it may seem trivial at first blush, the parties policing the Olympic marks recognize that maintaining the integrity of a global trademark is a long term commitment, and any erosion of that integrity is not to be taken lightly.
With that in mind, the following five lessons should be taken to heart by anyone operating a business.
Protect Your Mark Zealously, But Politely
While you may think the word "Olympics" is common and should not be trademarked, consider the fact that the Olympics may only be commonly known because the marks associated with it have been assiduously protected. One of the most important assets a company owns is its brand. Failing to protect the marks that embody its brand can have real consequences, including the loss of all rights.
Often, companies do not realize they are infringing on a mark and will stop all use after receiving a polite but firm cease and desist letter. Of course, there are always situations involving bad actors where it is important to be aggressive. This is when it can be indispensable to hire an attorney who recognizes when a polite but firm letter may be more appropriate than an aggressive take-no-prisoners one.
Treat Your Trademark Like an Investment
Your trademark might not enjoy immediate recognition throughout the world (or have a history that stretches to ancient Greece,) but you should act as though it does, or it never will. All trademarks face the conflicting goals of becoming universally used for their goods or services while avoiding being viewed as generic. When people use the term "Xerox" as a synonym for "photocopy," it illustrates the superior position that brand holds in people’s minds.
Because generic terms cannot function as trademarks, allowing a trademark to be used generically can quickly lead to the loss of trademark rights. This is one of many reasons zealous protection is so important. It is also why marks as well-known and frequently used as the Olympic marks must be vigorously protected.
Most business owners do not have committees in countries throughout the world policing their marks, but they should find ways to act as if they do.
Choose Your Mark Wisely
As in medicine, a little bit of preventative legal work goes a long way. Just consider the ramifications of receiving a cease and desist letter after you have promoted your brand for several months or years. Even if you have not done any advertising or promotional activity, changing your brand is almost never as simple as replacing the sign.
While it may seem like a large investment to have an attorney run a search and give you an opinion about whether your proposed trademark is acceptable, it is almost always less costly than rebranding a year or two down the line. Aside from the monetary cost, a business that rebrands loses much of the reputation built around the previous name and has to expend time and energy to re-educate its customers.
You likely know to avoid the term "Olympics," but you may not know the phrase "Citius Altius Fortius" or the numbers "2014" are also protected Olympic trademarks. There are thousands of trademarks in use across the country that could impact your right to operate under a certain name. Calculating the risk of infringement is an art, so contact a trademark attorney who does it regularly.
Importance of Forward Thinking
If properly protected and used, trademark rights may last indefinitely. This concept is important to grasp as global brands increasingly become a shared vocabulary throughout the world.
The Olympics, which draws the athletes and attention of more than 200 countries, illustrates how important it is to protect a global mark. If you are performing on a global stage, you should know what countries you plan to operate in and get protection in those countries immediately. If you secure those rights, they can be yours forever. If you fail to secure them, someone else can register your mark in those countries and force you to buy it from them later or, worse, force you to rebrand to enter that market.
Do Not Take It Personally
Whether you are on the sending or receiving end of a cease and desist letter, do not take it personally. While there are certainly bad actors out there, many situations are created by accident. Whether a business owner did not first determine if a mark could be used without impinging on the rights of others, or an organization did not realize it was impacting another company’s rights in its trademark, it is important to start a dialogue with the other party. Doing so is the first step toward educating an infringing party or reaching an equitable solution.
A small company may feel oppressed when a well-established brand demands it rebrand, but if thousands of companies were making use of a logo that a small company developed, it should rightfully want to stop them. When the issue is explained correctly, reasonable parties are more likely to recognize their transgressions and seek to remedy them.