Shane Rumbaugh is an attorney in the US practicing trademark, copyright & advertising law. He saw a gap in the market where large law firms’ rates were too high for smaller businesses and startups so he started Rumbaugh Law to deliver “big law” experience at small firm prices.
Before we dive into our conversation, do keep in mind that this area of the law is subjective, legislation is different depending on where you are based and you should always speak to an attorney about your particular case, and not draw conclusions based on what you are about to read/view.
Trademarks explained in simple terms
We started with me asking Shane to try to explain what he does, as if he is talking to a 3 years old. I find that helps when talking to experts in their respective fields, to bring the viewer into the topic in simple terms. Turns out he has a three years old at home so that was an easy task.
Shane is an attorney, focused on two different fronts. The prosecution side of things and litigation side of things. Half of his time is spent clearing brands. That consists in running searches and investigating which of the options a business wants to name itself, its services or products, are the most risk-averse. Once it is determined which options are best, Shane’s company can help with filing a trademark application to get protection and obtain a registration. Same applies to copyright and advertising. Nowadays with social media and everyone creating content it is very tempting for brands to use content created by their users. That carries certain risks that you may not even think about – music in the background, brands present in any way, things you don’t even think about but can cause your business significant trouble.
The other half of Shane’s job is litigation, or in simpler terms – protecting existing trademark rights. Here we touched on something that people often oversimplify with IP law – copyright law is very distinct and different from trademark law, and patients are also very distinct, and none of those three are interchangeable. The process of getting those, protecting them and the governing bodies for each are completely different.
We then touched on trademarks. Many people have that perception of trademarks as a tool huge companies use to make more money. But 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 standard of quality and possess certain characteristics that you ultimately want and pay for. Trademark laws are there to protect the consumer and guarantee that consistent quality that you can know and expect. The laws protecting brands are there to protect the consumer and their expectations of that brand. « You can’t hurt consumers » would be a good summary of all the law books Shane has had to read.
When is the right time to think about trademarks and copyright?
This may surprise you but the answer is immediately. The sooner the better. Trademark law is a property law, so the first in time, first in right principal 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.
A mistake Shane sees often is that people register their company with the state, they look for a domain, they register a .com name, get the 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.
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. The categories on the spectrum are three.
Generic words, like Apple in connection with the sale of apples. In that case the brand name does not function as a source identifier – when consumers see apples they think about the product, not the brand so you can not get trademark rights for those type of names.
Merely Descriptive Trademarks
An example would be “apple juice” in connection with the sale of juice. It is not generic but describes a quality, characteristic or feature of the good. Names of that type are not inherently distinctive, so are not generally protectable. Unless they show a secondary meaning, so if you have been exclusively selling apple juice under the name « apple juice » in time consumers may stop seeing it as a descriptive term, and make an association with your brand. You can try to file a trademark in those cases but it wouldn’t be a strong one.
To follow with the Apple example “An apple a day keeps the doctor away” – this is a popular saying and it evokes images of medicine and doctors, so it requires a mental leap to make the connection to the brand. This is protectable as a trademark.
This would be the example of Apple for computers or phones – real word that doesn’t have any connection to the category of goods and services other than the brand equity that you build. You associate Apple with phones and computers because Apple did a good job on educating consumers about their brand. Those are the stronger and more protectable marks.
They are inherently distinctive as they are not real dictionary word – google or bluetooth are examples of that, entirely made-up words, where their entire function is to be a trademark. They are very protectable.
How to choose?
When considering naming a startup a fanciful name can be more protectable in the long run. On the other hand using a common word or descriptive word can be more beneficial in the short term – you won’t have to spend that much time, effort and money on educating the market what your brand is about. So depending on your advertising budget and vision for your brand there are benefits to each of those approaches.
When should I hire a trademark attorney?
Ideally all the time. If that is not possible you should at least do 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.
You have to be objective when looking over your advertising and think if there is anything about it that suggests something that is misleading about other brands, and your own brands as well. It is good to have an independent party looking over those as it is hard to be objective about your own product or service. If you say something about your product you have to be able to back those claims.
Shane’s business offers some trainings 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 developments and main points. Another timely point is that increasingly brands want to use third party content, like user generated content on social media, and that carries all sorts of risks.
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.
On domain names
When discussing domain names, Shane feels domains’ importance is declining. He believes people before searched by typing a domain name in the address bar and now they search in search engines for the terms they are looking for. So the name is less important and what matters is getting on the first two pages of search 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 domains has changed, and the domain name value is subjective. It is a lot like real estate, there is only one of this exact domain and there is no alternative or substitute to 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 or/and have ways to get return on your investment by putting it to work. It would not make sense for someone who does not have the resources to invest and the vision and ability to get 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.
Who do Rumbaugh Law work with
The clientele ranges from very large to very small companies. Larger companies need trademark maintenance, strategy how to enforce their trademarks and defend them. It is a different type of discussion to a startup where they need help with what to worry about and what to do with the future in perspective, so the services and advice are adapted to the size of the business.