IP and Business: The Synergy of Trademarks and Marketing

• Author: James A. Dimitrijevs
• Position: Chair of the Intellectual Property Practice Group of the McDonald Hopkins business law firm Ohio, USA; and Annette Schaffer, trademarks specialist in the Legal Department of Pfizer Inc., USA. It first appeared in the INTA Bulletin of April 15, 2006.

Different jobs, different goals

Beginning in law school, lawyers are evaluated on their ability to spot issues. To "issue spot" is to identify problems that may arise from a client’s acts or intended acts. This ability to spot issues demonstrates a lawyer’s legal acumen, showing the quality of a lawyer’s legal education and the breadth of a lawyer’s professional experiences. Clients are most pleased with lawyers who not only identify problems but also are able to provide options for overcoming or minimizing those problems.

Marketers, on the other hand, have different concerns. Marketers help consumers understand the benefits of a product. Marketers are closer to the front line of competition, charged with making good products - and even some not-so-good products - successful. David Ogilvy, a U.S. advertising executive, once said:

"It has taken more than a hundred scientists two years to find out how to make the product in question; I have been given thirty days to create its personality and plan its launching. If I do my job well I shall contribute as much as the hundred scientists to the success of the product."

By the time the marketer is engaged, several business and technical personnel may have already decided that the product should be successful. The pressure is on the marketer to facilitate this success through his or her creativity. When the trademark lawyer’s involvement comes long after the marketer’s initial involvement, the marketer may have already evaluated and eliminated several possible marks and been subjected to criticism about the selected mark. After having defended the creation to others, a marketer may not be willing to surrender easily to the risks or concerns the trademark lawyer communicates after conducting a search.

Where do tensions between marketers and lawyers arise?

According to Amy Cohen Heller, senior trademark counsel for JohnsonDiversey Inc., the two biggest issues between marketers and trademark lawyers are timing and objectives.

While Mark Gale, chief operating officer and creative director of Charleston/Orwig Advertising, advises marketers not to underestimate the cost and disruption that can come about when the full evaluation of a proposed mark is not done, trademark lawyers are concerned about not having enough time to conduct appropriate diligence to...