PARSING TRADEMARK LAW, THE WRITTEN WORD, AND WOE TO THOSE DIMINISHING RETURNS

Here is a disturbing email I received this morning. At first, I was stunned at the flagrant silliness of it all, but soon, the more serious soldier in me took hold, and I knew I had to earn my right to any two words I had begged, borrowed, stolen, or simply hustled into existence by the simple magnitude of "fair use" communication. But first, the email in question:

Dear Ms. Thy:

I just ran across an article you wrote on Idiotsheet entitled Most Important Art of the New Century, posted March 1, 2008, here, and I would like to raise an issue that is of concern to Selling Power magazine, which is the use of our trademark.

The word "Selling Power" is sometimes erroneously used as a synonym for sales effectiveness. For example, your article states: “Rose, the Danish culture editor, saw the cartoons’ selling power." We do not condone such uses of our trademark.

As a practical matter, when you describe sales effectiveness, there are a wide range of terms available such as: sales excellence, sales savvy, sales mastery, sales acumen, sales efficiency, and many more.

The reason for this letter is to educate writers like yourself that we want to protect our trademark, since we don't want to risk Selling Power being declared by the courts a generic word. Therefore we ask you not to use Selling Power as a phrase since it is our legal trademark.

We would like to receive a written acknowledgement of this letter stating that you will in the future identify Selling Power as a trademark if you should write about our magazine, and not use Selling Power as a phrase. If we do not hear from you, we will need to take further action.

Thank you for your understanding and cooperation.

All the best,

Gerhard Gschwandtner
Founder and Publisher
Selling Power
1140 International Parkway
Fredericksburg VA 22406
Office: 540-752-7000 Cell: 540-273-2555

P.S. Watch Selling Power videos online www.sellingpower.com/video

Well, that was fun. So I started thinking about how to deal with this matter. I hadn't even penned the article, but here I was, a big man of little consequence, having to maneuver past a corporate threat to take further action against me. Here's the result:

Dear Mr. Gerhard Gschwandtner,

Thank you for your interesting letter, but you MUST be joking! I hardly think your "corporate trademarking powers" lend themselves to completely co-opting a rather common linguistic phrase (however tortured the phrase may appear to esteemed English professors everywhere), claiming sole ownership of the commonwealth of jargon, and thus effectively removing said phrase from the lexicon of ordinary speech, with the sole exception being to reference your magazine.

And to make matters more difficult to curtail, this same article has been posted hundreds of times across the Internet, including USA Today, The Wall Street Journal, Jihad Watch, and other prominent sites. Are they getting similar notifications from you? Probably so, but I am rather certain that they feel your claims are as unjustified as I do. I believe the article originated with the Wall Street Journal.

Granted, I am not a trademark attorney, but I do believe common sense should easily rule out your own contentions, and leave the free association of words within language to common users, not to the speculators. While the courts do seem to rule in favor of trademark holders when a competing commercial firm tries to ease in on a valued branding, that precise scenario is not the case here.

Think about it. Life Magazine's trademark status did not restrict the usage of the word life. People Magazine's trademark status did not limit usage of the word people. Time Magazine's trademark status did not forbid usage of the word time. And I hate to think how the Rolling Stones rock band and Rolling Stone Magazine finessed that sticky issue of trademarking. And while Apple Records and Apple Computer struggled for years with trademark issues, the word apple was not stripped from the tongues, pens, and crayons of men, women, and children everywhere. And what of Soldier of Fortune? Ditto for Consumer Reports, Family Business, SmartMoney, Good Housekeeping, Fair Play, Best Buy, and in these tough financial times, what ABOUT the Financial Times? And scratching further, we find the phrase "what's it like living in the USA today" would be verboten in your logic stream.

Are people now being harassed for infringement of generic trademarks and slogans ripped whole and presented to the public from the common language, even without modification or branding reference, frequently found in fast food chain ad campaigns, trademarked phrases all?

An example of one type of trademark limitation I have uncovered with a little research is that although Maytag owns the trademark "Whisper Quiet", makers of other products may describe their goods as being "whisper quiet" so long as these competitors are not using the phrase as a trademark.

Items: You deserve a break today. Catch the wave. Have it your way. Where's the beef? Drivers wanted.

Simply put, the phrases "selling power" and "buying power" are common phrases, and cannot simply be plucked off the tree for the sole benefit of corporations with an urge to monopolize lingusitic pursuits. I might be wrong, but I express doubts that the phrase "selling power" originated in the minds of your own public relations staff, and has arrived upon the contemporary scene as a result of your magazine.

But of course, your entire case rests on this single point, does it not?

Please don't misunderstand me, but ever since humanity has had to put up with politicians we've had to put up with people selling power. I heard just the other day that a thermal company in Ohio earns 20% of its annual revenue "selling power" to the city in which I live, Washington, DC.

To address your possible rebuttal stance, here's a few pertinent passages from what I dug up on the Internet:

b. Titles. Titles, while not protected under copyright law, are sometimes protected under trademark and unfair competition laws. However, one-shot titles, no matter how clever they are, are not automatically entitled to trademark protection. To be protected, titles must achieve "secondary meaning." Secondary meaning is akin to the commercial magnetism of a title. As a rule, to be protected, titles must be "broadly known." Series titles, unlike one-shot titles, make good trademarks candidates. In addition, a title in one medium, will be protected in another.

Trademark Dilution (alluded to in your email)

Trademark dilution refers to the whittling away of a famous trademark's distinctiveness through unauthorized use. Under federal trademark dilution law, the owner of a "famous" mark is entitled to stop another person's commercial use of its mark that dilutes, blurs or tarnishes its "distinctive quality." Unlike traditional trademark infringement, neither likelihood of confusion, nor competition between the parties' goods is required.

What the federal trademark dilution statute does (15 U.S.C. 1125(c)) is make parody and satire, especially in advertisements and commercials, a high risk endeavor. For example, where there's a negative or unwholesome connotation about a "famous" mark, courts are likely to enjoin use.

TIP: Trademark dilution only applies to strong marks. Dilution can occur when a well- recognized mark is parodied in an advertisement, even if there is no likelihood of confusion.

At the top of the list are arbitrary or fanciful terms, which have no pre-existing association with the underlying product (e.g., CAMPY, 7-UP, XEROX, KODAK). As you move up on the trademark ladder, trademark owners receive additional trademark protection. For example, the mark McDonald, which has no association with fast food restaurants (other than that which they created through brilliant marketing), receives extremely broad protection. Indeed, they have prevented all sorts of "McFreeloaders" -many of whom do not even compete in the food service industries. In addition, fanciful marks are presumed to be valid trademarks.

Yes, I recall the Xerox complaint. From the 1970s-80s, if mem'ry serves. Seems the population, myself included, used the tradename ubiquitously as a verb meaning to photocopy, and after years of aggressive PR, the company finally seems to have won the day in stopping the practice. But what is Xerox up to these days? Not so ubiquitous. Definitely not a household word anymore. I suppose that is a "good thing" to certain types of trademark lawyers.

I still catch myself using the offending term on occasion in a slip of the tongue. Of course, I would never "write" it down in verb form today for fear of upsetting a few lawyers itching for a fight, and after all, it's such an antiquated term, now. So perhaps you have a point, although one might think that the unwitting consumer honors rather than tarnishes the corporate image with its verb-making homage to an electronic process, as well as boosting the product line.

Not quite the same, but isn't this eerily similar to the mistake IBM made with Bill Gates when DOS was barely three lines of code?

And yet, despite armed to the teeth with attorneys, and victories in a courtroom, a famous hamburger chain has helped spawn the term, McJob, which has entered the working vocabulary of an entire generation of authors and writers and wage slaves alike, in a word meaning a lowpaying, cog in the wheel job, a temporary job until something better comes around, a word I've seen published in novels and countless newspaper and magazine articles. A word used disparagingly, or simply as a statement of descriptive fact. Then there's McMansion, an instant hit among the chattering classes in depicting all these large, brand spanking new, but generic crackerbox houses popping up in suburban real estate developments everywhere...

I'm sorry sir, but I find your position nothing short of a misconceived strategy of corporate bullying or simply some sort of backwards advertizing. But to your certain delight, I have removed the offending column, but only because I have abandoned the entire blog, coincidentally just yesterday, for reasons stated in the final entry. But while I comprehend your threat to seek further action as if this phrase "selling power" were some majestic or magical phrase with only one possible grammatical impact, and that is as the title of your magazine, the irony is absolutely hilarious to me. In every courtroom there oscillates at least two, and usually three lawyers with very strong opinions. So there is still hope that common sense and better sense may one day rule the land.

Again, I thank you for writing. And while it is clear I'm not a fan of your PR tactics, and believe your case against my second hand posting of the two words is weak, I do nevertheless appreciate your enthusiasm in educating me on the finer litigation points of trademark law, that fine line drawn between common language and commercial language, where language once thought to be blissfully free of baggage is whisked away from the wonderful plasticity of itself, and somehow spun out of control to re-enter an atmosphere where every word has a price beyond the marketplace because someone else pays a license fee which bestows ownership, a public image, and a profit margin to maintain, even in contexts where the trademark is not remotely impinged.

There are no advertizements on my blog, nor do I make a dime for my troubles. And while I applaud your root capitalism, there are limits to ownership theory, surely one must admit, even in a free and flourishing ownership society.

Regards,

Gabriel Thy