Lesson: Trademarks with Ed Timberlake

Step #6 Due Diligence: Trademarks & business strategy

One thing I think lawyers do a really bad job of is speaking to normal human beings who've been doing real stuff instead of law school for the last three years or instead of in the law library for however long. One thing that I find that trademark lawyers like to throw around is what's called the spectrum of distinctiveness. It comes from the particular legal case that said, "Okay, there's a spectrum." The key to trademarks is to distinguish your stuff. You need to stand out. Your stuff needs to be so that it doesn't just blend in. It can't be indistinct. It should be standing out in some way from the other stuff. Some things stand out more than others. In the legal area we call that distinctiveness. It's something more or less distinctive. There's a spectrum of distinctiveness where you got some stuff on one end, some stuff on the other.

Human beings don't talk that way. I don't think that's a particularly meaningful way to talk to somebody who's in a business. They got tax stuff to worry about. They got zoning stuff to worry about. They got domain stuff, they got a website to build. All of this stuff that's going on, in my opinion, it's fascinating in theory, but it's a little too arcane. I think the idea is the fundamental idea of just what are we going to do to set ourselves apart? The sort of punch line of all of the distinctiveness conversations is there's a spectrum of things that are more or less distinctive. You want to pick the one that's right. Pick the one that's just right. Great, that doesn't help me at all. How do I get there? What is going to be helpful? What's going to be helpful for you is different depending on what the business is.

That's why I think it's important to consider some of this stuff that we do in trademark law all the time. Just to consider it as competitive research, market research that you're going to want to know. Ideally, if you move forward with a business name or a business logo or whatever it is, the last thing you're going to want to do from a trademark standpoint is be surprised that somebody else is already out there. Frankly, just as a business matter, you shouldn't be surprised by what somebody else is out there doing because you want to know exactly who it is. Not to overstate it too much, but in a capitalist economy, you're venturing into these areas. The other players there, competition is great, everybody loves this, but the other players want you to die. They want you to go away. They are better, they survive better and make more earnings and more profit if you don't come there.

I think it's bigger than just, "Can we use this trademark? Does somebody else have this trademark?" I think you want to know, if we're venturing out into this area who are the sharks there? Who are the people there that are lurking, hiding behind the trees that are going to just want us to go away from the moment that we set foot out? From the moment we open the website? You need to be prepared for the big leagues. I hate to bring in a sports thing, I'm a sports guy. You need to be prepared to be venturing into this larger world. Unfortunately, these days with as much activity and as much visibility as there is on the Internet, it's much harder these days to stay out of that. In the old days you could just open a shop on a street corner and you wouldn't get hassled by anybody because you just had that shop and people would walk into your store. Nobody else would even find out about you. Now every shop has a website.