Cory Doctorow writes about a corporate lawyer from Jack Daniel’s handling a trademark issue extraordinary well. It’s about a book cover, and the author of the book tells his own story in a post entitled The Whiskey Rebellion. The book cover mimics the look of the JD label. Owners of a trademark have no choice but to pursue infringements, otherwise they can lose their trademark. But they can choose how to approach it, and therein lies the difference.
This particular lawyer also made the effort to explain the “why” just as I described above. That too is important, as I’ve found that it’s not well understood. As the Community Relations person at an international corporation, I used to be the first one contacting people in case of a trademark issue – I generally had to explain the why, but other than that there was no hassle and we’d come to some sensible solution.
With knowledge of how trademarks work, it’s not hard to assist people in avoiding the trademark even while still using the name. An interesting recent example is “LEGO Workshop” (legoworkshop.com), created by two kids (15 and 11yo). LEGO contacted them for infringement of the LEGO trademark. Of course they’re the cutest underdogs and great for a media story, but LEGO was in the right and as I explained they have no choice if they want to keep their trademark. It does appear that LEGO played corporate bully in this case, and then got the public backlash. A simple solution would have been to suggest “Workshop for LEGO” as a name, and they could’ve even gone out and acquired the domain for use by these kids. If that’d hit the media, it would have been good publicity.
The short story (and remember I Am Not A Lawyer) is that trademarks are adjectives (“a LEGO brick”). They should not be used as nouns (“I own a Ford”) or verbs (“Just Google that”). Google was very unhappy about their name morphing in to a verb, but it’s a use by people rather than a product or site – impossible to police. I presume their trademark (that is, exclusivity on its use) is effectively lost although it’d have to get challenged in court by someone before that would actually be made official. Hoover (the vacuum cleaners) are a neat historical example of this, their name turned in to both a verb (“to hoover”, which in British English means “to vacuum”) and a noun (“hoover” being a synonym for vacuum).
So the proper trademark use is “<trademark adjective> <product>”, and that use needs to be protected by the trademark holder. Further, improper use as verbs or nouns can also weaken the trademark and must thus be prevented as well.
Avoiding trouble is not hard. Let’s say you want to create a fanclub for brand or product X. “X Fanclub” is not appropriate but “Fans Of X” should be fine. “<noun> for|of <brand|product>” is the general form that makes it safe. So if you build a supplementary product for a bigger brand, you could use the form “<yourproduct> for <brand|product>”.
The same applies to domain names. Admittedly, sometimes this naming restriction makes finding a nice looking domain name quite a bit harder. But still, you want to have fun or start a company/product, not get stuck in legalities. You could also ask (the owner of the trademark). In any case, having to change a name later can be both annoying and costly.