This weekend, I had a blast presenting to a group of fellow bloggers at the Blogging While Brown conference, one of my signature workshops, “Got a Blog? Protect Your Brand in Cyberspace.” Ironically, blogger @nicolenewblack sent this tweet:
I’ll be honest. I had been so busy with my head in trademark-blogger space, prepping for the workshop that I didn’t know a blogger-corporation trademark battle was unfolding right under my nose.
Turner Barr launched the popular travel, lifestyle blog “Around the World in 80 Jobs” two years ago. The blog chronicles his journey working various odd jobs around the globe in a search for his muse, for work that satisfies him. Just recently, the employment giant Adecco USA, launched a campaign also named, “Around the World in 80 Jobs” whose purpose is to “inspire young people to find a way to work.”
Barr had not registered his trademark so he was operating under a common law trademark (simply meaning it was unregistered). Adecco filed an Intent to Use trademark application with the United States Patent and Trademark Office (USPTO) on April 9, 2013. Since the trademark application is fairly recent, USPTO has not approved or denied his application. Once, and if, Adecco’s application has been approved by an Examining Attorney from USPTO then it will be published for a thirty day Opposition Period. During this time, anyone, including a common law trademark owner can file an opposition which should demonstrate that the registration of the mark at issue (here, Adecco) would cause “irreparable harm.”
This is the beginning of the process, which means that all is not lost. If Adecco wants to demonstrate goodwill to Turner and the public it can agree to withdraw it’s application and negotiating a settlement terms with Turner to use the name in their campaign. If they proceed with the application, Turner can file an Opposition. Either way, I hope that he continues to spread the word about this issue to the public, and that he takes the proper legal steps to protect his brand.
Why should you care?
Well, if you are like many of the start-up bloggers that I know, you probably do not have your trademark registered. Initially, it’s fine to hold off. You may want to test your new brand out and make sure you are committed to it.
However, there is no such thing as a small brand. Maybe back in 1999 (yep, that’s the year I graduated high school), but certainly not in this world of technology, social media and the wondrous world wide web. Your brand is bigger than you think. With that said along with a slight slap on the wrist (because I know you are still saying, “I DO have a small brand. No one knows me yet), here are your takeaways.
Go big or go home. Take over the world wide web and real life with your brand to show that you are using it “openly and continuously.” You will need to demonstrate “open and continuous use” to register with the the United States Patent and Trademark Office (USPTO).
Set up a free Google Alert to monitor exactly when and where brand is mentioned.
Plan ahead. Even if you cannot afford a trademark registration right away, give yourself a firm date to move forward.
That’s it for now. I’d love to hear your thoughts. In the meantime please follow Turner Barr’s trademark issue at #80jobs.
As soon as I published this post I saw an update from Turner Barr that Adecco is going to make things right. It looks like Adecco agreed to the following terms that he outlined in an open letter published on his blog. “…I suggest the following:
1. Apologize for your mistake, and take responsibility
2. Compensate me the same amount that you paid your advertising firm for the Around the World in 80 Jobs marketing initiative that was built off of the back of my work. From my understanding, this was about $50,000.
3. Cease and desist using my brand name Around the World in 80 Jobs and drop the trademarks that you are pursuing.
4. Donate $50,000 to Save Elephant Foundation (a nonprofit dedicated to providing care and assistance to captive elephants) to prove your commitment to bringing awareness to social responsibility. This organization and its founder, Lek Chailert, are true examples of social responsibility and an inspiration to us all. I had the opportunity to work with the elephants and Lek and she really inspires me as she fights a lot of big vested interests in Thailand and Southeast Asia and pursues what she believes is right despite fierce opposition. A $50,000 donation would along way in showing you are committed to being socially responsible, more than merely throwing a contest with prizes.”
This is outstanding news and a tremendous lesson in “Go Hard or Go Home” + the value in your brand. Not every corporate giant is as agreeable (as I’ve seen in my practice), but the fact that Turner’s brand was well established and consistent certainly helped.
I am going to keep this on my radar to see if Adecco actually drops the trademark application. If so, I hope that Turner files his registration A.S.A.P.