The world of big trade events is back in full swing, and to those of us who work in trademark law, that means the International Trademark Association (INTA) annual meeting is back after an absence since 2019. While the attendee numbers will be down – substantially – we are still looking at many thousands of trademark lawyers from all over the world getting together in Washington, D.C.
So, when the biggest of brand rivalries takes center stage, and the biggest of products from the biggest of rivalries is unveiled, it seems a bit unsettling that this launch of launches – the electric Ford F-150 – comes in the midst of the time when trademark lawyers from around the world are celebrating their craft and the importance of brand names to the global economy. The Ford “F-150” brand not only shrugs its shoulders to this idea, but really lends a beefy “buzz off” to the boards of tremendously creative people who develop brand names, the equally talented multitudes who market them and advertise them, as well as the brand-name fanboys and fangirls who are actually disguised trademark lawyers who protect and defend those brands.
The INTA annual meeting is a place where people come together and, just like in every industry, renew old friendships and business contacts, gathering intelligence from collaborators and competitors.
Carmakers have always been a dominant force in the American economy, and one of the most iconic brands is one that makes many trademark lawyers cringe: Ford’s “F-150” truck.
The product with the name “F-150” is the best-selling vehicle – not just the best-selling truck – in the U.S.A. and in Canada. In the United States alone, Ford sold over 700,000 F-150 trucks, and in recent years has sold over 900,000 annually in the United States. This translates into tens of billions of dollars of sales for Ford each year. Also branded “F-150” are the usual affinity items from T-shirts to keychains and all of the usual other paraphernalia that people love to wear, emblazoned with their favorite brand. With a brand as enormous as the “F-150,” those tchotchke sales alone no doubt generate significant business. The potency of the name even exists in one well-publicized “F-150” trademark dispute versus Ferrari (yes, exactly – a Ford v Ferrari!). It did little to dent the “F-150” brand.
Here at INTA, the things that are on people’s minds include the metaverse, blockchain and NFTs.
Figuring out how companies will address the turbulent landscape where their trademark rights have been canceled, given some new laws, is another question.
Traditional trademark questions at a convocation like INTA include, what is a good mark which can be more easily translated – literally and otherwise – into different markets? (That is less likely to be an issue for a mark like “F-150.”) Trademarks related to COVID testing and vaccines is another hot area this year.
Another hot topic of discussion at INTA is whether court hearings will continue to take place remotely. Our firm has been back in court in-person, but like every other professional area, many of the conveniences and practicalities of remote work have stayed intact and are probably here for good. For years, the court at the U.S. Trademark Office had judges appear remotely. I was speaking with one of the judges at the conference and he believes that in-person hearings at the Trademark Office will become a thing of the past.
Judges in many courts have had telephone conferences for years when they want to check-in with parties, and have allowed lawyers and participants from remote cities to join by telephone conference calls.
The 6,700 people here representing the world’s companies and law firms cannot be wrong in their assertion that brand names play a crucial role in marketing products; as such, the brand names need to be protected. Your key is overwhelmingly a matter of finding a name that can be uniquely associated with your product or service. Next, in turn, the brand owner is required to invest in keeping other brands from growing around its peripheries with names or designations which could be similar, and eventually syphon off sales through confused retail consumers, business-to-business wholesalers, or both.
Trademarks are important because it is crucial to choose a name that others will not readily be able to use; of paramount importance, one must protect against possible infringement by actively policing one’s rights, which can entail everything from keeping counterfeit goods off the market, to in other cases writing to a prospective competitor when it seems they are choosing (intentionally or not) a name that is too close, and then, lastly, to engage in legal proceedings available through the Trademark Office and courts (including perhaps a preliminary injunction) when a resolution cannot be reached and there is no time for discussion because infringement is so severe.
New product names do not always follow the rules. Some product owners always want more than anything for their potential customers to understand from their brand name exactly what their product or service means, or what it does, or what it says, all of which are great attributes – but such descriptive nomenclature can rarely be enforced against a competitor who likes the same good idea and tries to stress that to its own customers by using the same or a very similar descriptive name. That rule is broken regularly – both intentionally by companies which know the descriptiveness rule, and unintentionally by others which do not know the descriptiveness rule – and then there is a third category of parties that break the rules knowing exactly what they are trying to accomplish at the expense of a competitor.
Sometimes, the rule breakers win. But coming up with great names – and doing everything possible to help them stay unique – is a demanding business. Looking around the Washington Convention Center this week, it certainly is one which attracts a crowd.