Shane Rumbaugh is an attorney in the United States who practices trademark, copyright and advertising law. He recognized a gap in the market wherein he felt “big law” rates were too expensive for smaller businesses and startups to affordably protect their brands. So, Shane started Rumbaugh Law PLLC to deliver the experience, polish and service associated with larger firms while charging small firm prices.
Before we dive into our conversation, do keep in mind that every case is unique and that the law varies in different jurisdictions. As such, you should always consult with an attorney about your particular case. Nothing in this article or interview is intended to be or should be considered as legal advice.
Trademarks explained in simple terms
We started the interview by asking Shane to explain what he does as if he were speaking with a 3-year-old. When speaking with experts in their respective fields, I find it helpful to familiarize the listener with the topic in simple terms. As it turns out, Shane has a 3-year-old at home, so this was a familiar task.
Shane focuses his trademark practice on two different fronts: trademark prosecution and trademark litigation. Half of his time is spent on trademark prosecution, or, in other words, clearing trademarks and pursuing their registration. This consists of running searches and investigating which potential names for a business, its services, or its products present the lowest risk. Once it is determined which branding options are best, Shane’s firm helps with filing a trademark application to protect the brand and obtain a trademark registration. Similar considerations of risk apply to copyrighted materials and advertising campaigns. With the prevalence of social media and widespread content creation, it is very tempting for brands to use content created by their users. Risks abound in areas that one may not even consider – music in the background of a video, or brands visible in an image – things one may not normally think about can cause businesses significant trouble.
The other half of Shane’s trademark practice is litigation, or, in simpler terms, protecting existing trademark rights. Notably, people often oversimplify intellectual property law by conflating trademarks with copyrights or patents. However, copyright law is very distinct and different from trademark law, as is patent law. None of those three areas of intellectual property are interchangeable. The process for obtaining trademarks, copyrights, and patents (as well as the process for protecting them and the governing bodies for each) are completely unique.
We then discussed trademarks specifically. Many people have a perception of trademarks as a tool huge companies use to make more money. However, if you think of brands as source identifiers for particular goods and services, a trademark is a guarantee for the consumer that those goods and services meet certain standards of quality and possess certain characteristics that you ultimately wish to purchase. Trademark laws exist to protect the consumer and guarantee the consistent quality and characteristics that you come to know and expect. The laws protecting brands are there to protect consumers and their expectations of that brand. « You can’t hurt consumers » would be a good rule summarizing all the trademark books Shane has read.
When is the right time to think about trademarks?
This may surprise you, but the answer is “immediately.” The sooner, the better. Trademark law is a property law where the “first in time, first in right” principle applies.
You want to think about it early in the process because you want to file a trademark application that will put you earlier in the line. You may not have launched yet your business but you want to reserve that spot.Shane Rumbaugh
A mistake Shane sees often is that people register their company with the state, they look for a domain, they register a .com name, they establish social media for that name, and they think “I’m all set.” And that is where they are wrong – that does not give them trademark rights.
Registering the business under the name doesn’t give you trademark rights. Registering a domain name doesn’t give you trademark rights. What gives you trademark rights is filing a trademark application with your relevant jurisdiction, or selling goods and services under the trademark. You don’t have a brand if you don’t have it legally.Shane Rumbaugh
The spectrum of distinctiveness
All trademarks sit somewhere on the spectrum of distinctiveness, which is how unique the name is in relation to the goods or services that you sell. All trademark rights tie only to specific goods and services. There are four categories on the spectrum.
Generic marks, like “Apple” in connection with the sale of apples, are not protectable. In that example, the brand name does not function as a source identifier because the generic term “apple” leads consumers to think about the product rather than the brand.
Merely Descriptive Trademarks
An example of a merely descriptive mark would be “Apple” in connection with the sale of apple juice. It is not generic because it describes a quality, characteristic or feature of the good. Nonetheless, names of that type are not inherently distinctive, so they are generally not protectable unless they acquire a secondary meaning. For example, if one sells apple juice under the name “Apple” exclusively for a period of time, consumers may stop seeing it as a descriptive term and make an association with your brand. You can obtain a trademark in those cases but it wouldn’t be a strong one.
Suggestive marks are inherently protectable. To continue with the “Apple” example, “Apple” as applied to medical services would be a suggestive trademark. This is because “an apple a day keeps the doctor away” evokes images of medicine and doctors. However, one must still make a mental leap to make the connection between “Apple” and medical services. This is protectable as a trademark.
Arbitrary or fanciful marks provide the strongest rights and are the most protectable. “Apple” as applied to computers or phones is an arbitrary mark – the brand doesn’t have any connection to the category of goods and services other than the brand equity that Apple has built. You associate Apple with phones and computers because Apple did a good job educating consumers about their brand. Similarly, “Bluetooth” or “Google” are fanciful marks because the words are made-up – their only function is to be a trademark, and they in no way describe or suggest the goods or services provided under the mark.
How to choose?
When considering naming a startup, an arbitrary or fanciful name can be more protectable in the long run. On the other hand, using a common word or a descriptive word can be more beneficial in the short term – you won’t have to spend as much time, effort, and money educating consumers on what your brand provides. Depending on your advertising budget and vision for your brand, there are benefits to each of these approaches.
When should I hire a trademark attorney to protect my brand?
Ideally, always. If that is not possible, you should at least get an initial consultation at the beginning and have the attorney look over your materials.
The general rule of thumb is that you should always be doing everything with the consumer in mind. You can’t say things that are false or misleading to the consumer and affect their purchasing decisions.Shane Rumbaugh
You have to be objective when looking over your advertising to consider if there is anything about it that suggests something that is misleading about other brands, or misleading about your own products or services. It is helpful to have an independent party reviewing your marketing materials, as it is hard to be objective about your own products or services. If you say something about your products or services, you have to be able to back those claims.
Shane’s business offers some training for the marketing or legal in-house teams that work on reviewing content. Even if you have an internal team handling the process, it is good to have annual refresh courses for them to cover any new developments and the major points. Increasingly, brands want to use third-party content (such as user-generated content on social media), and that carries all sorts of risks that experienced counsel can help address.
A training session can go a really long way. It is one of those areas of the law where an ounce of medicine is worth a pound of cure.Shane Rumbaugh
On domain names
Shane feels the importance of domains names is declining. While people used to search by typing a domain name in the address bar, they now search using terms they wish to investigate in search engines. So, the domain name is less important, and what matters is getting on the first two pages of search engine results. It has not been our experience looking at brands globally, but it certainly can be the case with startups. We discussed that the importance of domain names has changed, and the domain name value is subjective. It is very much similar to real estate – there is only one of this exact domain name, and there is no alternative or substitute for it. I made an analogy with an apartment listed for sale for 10 million euro on our street – it makes sense as an investment if it is something that you can enjoy owning and/or have the means to get a return on your investment by putting it to work. It would not make sense for someone who does not have the resources to invest or the vision and ability to get a return on that investment.
Similar to a number of my previous guests, Shane believes a complete rebrand is always a risk.
Anytime you build brand equity the change is jumping into something unknown. You may encounter problems you didn’t envisage with the new name, other brands may come up with claims, it may cause confusion with consumers, they may not relate to the new brand same way they did with the other one.Shane Rumbaugh
With whom does Rumbaugh Law work
The clientele ranges from very large to very small companies. Larger companies need trademark maintenance, as well as strategies for how to enforce their trademarks and defend them. It is a different discussion with a startup who needs help defining what to worry about and what to do with the future in mind, so the services and advice are adapted to the size of the business.
Listen to the full interview below and learn more about Rumbaugh Law here.
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