20-Jul-09 8:00 AM  CST  

Working Together by Gabriel Gelb 

Both Marketers and attorneys can help protect a company’s intellectual property.

A marketing vice president, by no means atypical, finishes his “rounds” at an industry trade show and shakes his head. “We’re the leader in our category,” he says. “So when I go from booth to booth, I see competitive products that look like ours, are packaged like ours, with names that seem like ours, and one competitor promotes its brand with brochures that track what ours say.”

His next thought may be: “Let’s sue.” But before doing so, it pays to understand what roles marketing managers can play in successful litigation, whether your company initiates an infringement claim or must defend against one. First, marketing managers should build inherent distinctiveness into a product and its marketing components as early as possible. Next, if you do see imitation, then collect evidence that customers confuse “imitating” brands with your brand. Last, if a lawsuit is initiated either by your firm or a rival, a marketing manager can assist (with a light touch) a litigation survey expert who will help protect your company’s intellectual property by showing the extent of confusion in the marketplace.

The first role, creating inherent distinctiveness, is best recognized before the launch of any consumer or industrial product or the opening of any “first” retail outlet since all of these attract imitators as they become successful. The more a design, name, logo, or package is unusual (think pink Owens Corning insulation); the easier it is to protect. In the case of names, distinctiveness has the additional advantage of making it easier to defend against an assertion by a rival that the name is generic and therefore anyone is free to use it. The trademarked “Scotch tape” and “Kleenex tissues” are still protected brand names, more easily defended than “sticky-tape” or “pop-ups” might have been.

The second issue for marketing managers is awareness of how attorneys demonstrate confusion and how you can help. If a rival’s product looks like yours or is packaged like yours – or if the trucks in which it is delivered look like yours – some customer of that rival may have contacted your company, mistakenly demonstrating that they thought they had bought a product that your company made. If every salesperson and customer service employee, as well as everyone in marketing management within your company, has been told where to send written evidence of such confusion and told to ask callers to put a telephoned complaint in writing (e-mail is fine), your lawyers will be able to show confusion more easily than they would without such material.

To read the full article, download a copy here:  Working Together

 

For additional information on this Expert Witness article, please contact:

Gabriel Gelb
281.759.3600 x1014

Source: Gabriel Gelb
http://www.gelbconsulting.com

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