Interview with Brian Chau (Commentary in Italics)
1. How
important is it for a company to develop brand recognition through trademark?
Depends on the industry. Trademarks are important where there is little
customer recognition of the merits of your product or where you have a large
number of competitors. For example, Coca-cola's trademark is far more valuable
than Apple's trademark because Apple's products can themselves, while
Coca-cola's can't.
He explains the importance of trademarking especially
when the market is saturated with similar products. I thought he gave a great
example with Coca-Cola. There are plenty of other colas in the market and
through a trademark, Coca Cola was able to create a lifestyle image around the
product. As they became better known, it was that much more important to
register their trademark to ensure other would not infringe upon what the
company built. “A trademark is any combination of words and
symbols that a business uses to identify its products or services and
distinguish them from others” (Page 509). Even
though there are plenty of fizzy drinks on the market, the brand logo
distinguishes it from others similar products.
2. Why is it necessary for
companies in the fashion industry to protect their product through trademark
registration?
You get trademark protection automatically, but trademark registration gives
you benefits you would have on top of common-law trademark protection, such as
presumed notice by infringers,
cross-jurisdictional enforcement, etc. Given the ease of copying in the fashion
industry, it's important to have all means available to stop infringers.
Brian brings up an interesting point
here. Under common law, the first person to use
a mark in trade owns it. Registration under the federal Lanham Act is not
necessary. However, registration has several advantages:
·
Even if a mark has been used in only one or two states,
registration makes it valid nationally.
·
Registration notifies the public that a mark is in use, which
is helpful because anyone who applies for registration first searches the Public Register to ensure that no one else has
rights to the mark.
·
The holder of a
registered trademark generally has the right to use it as an Internet domain
name. (Page 509)
It
is interesting to note that there is protection of a brand mark regardless of
federally registering it or not. I agree that it is probably in the brands best
interest to trademark the logo because it is very easy to steal and replicate
designs. One can see this just by typing “fake Louis Vuitton” into a Google
search.
3. If I make a design that
unbeknownst to me is a reasonable facsimile of someone else's design, what legal
recourses will the offended party take against me?
This is both a copyright and trademark issue. Copyright may not apply if you
can show that you independently designed it, without access or copying
another's design. Trademarks on the other hand, they can demonstrate that if a
potential customer would be confused by your design and think that the object
came from the original designer, then they may be able to sue for passing off
(unregistered) or trademark infringement (registered). They can either sue for
an injunction (stop using it) or damages (payment).
Brian’s standpoint on copyrights are interesting. I
think it would be difficult to prove you did NOT access another designer’s
design for the sole issue that the designs looks similar enough to bring before
a court. “The holder of a copyright owns the particular
expression of an idea, but not the underlying idea or method of operation” (Page 506). It is very difficult
for brands to go after copyright pirates and seek damages. We can see this by
the amount of counterfeits there are out in the market now.
4. In your opinion, can it
be argued that the common practice of copying new fashion designs in affect forces
designers to come up with fresh new ideas?
That's one side of the argument. The other side is that fashion designers
invest significant resources in developing their ideas and no one would create
if it would be immediately stolen by a third party.
I have to agree with both arguments. Yes, it does
force designers to come up with the newest greatest ideas, but on the other
hand, these designers are investing time, money, and effort into creating a
tangible form of their artistic expression. This is why it is important to have
copyright laws in effect to at the very least, dissuade others from stealing a
designer’s work.
5. When in the startup of a
business is it advisable to trademark your brand?
You can either do it before you use it as a proposed use, or after you start
using it. It depends on the type of business, how important the trademark is
going to be, and the strength of the trademark. If it's
really distinctive, it's easier to apply for a trademark; if it's not, it's
really hard to get one without showing that customers know your mark in the
marketplace.
I believe it also depends on the strength of the
brand. I don’t see a use in spending the money to trademark a logo if they are
not even big enough for anyone to care about. Brian speaks about the strength of
the trademark which might be hard to figure out. It really depends on the
trajectory of the brand itself and whether the owners see it exploding into a
well-known brand.
6. How long does it take for
an application for a fashion trademark to be approved?
Depends - if it doesn't get opposed by a third party, likely in 4-8 months (in
Canada). If it becomes opposed or the examiner thinks it is unacceptable, it
can be much longer.
7. How long do fashion
trademarks last?
Trademarks have no set expiry date; but if you don't use it, it is vulnerable
to an expungement action from a third party to get rid of it.
Perhaps this is different in Canada, but according to
the textbook, “Initially, the trademark is valid for 10 years,
but the owner can renew it for an unlimited number of 10-year terms long as the
mark is still in use” (Page 509). It really depends on the strength
of the brand and whether it has become well-known in the 10 years it has been
in use. If after 10 years, it is still obscure, then I agree someone else
should be able to use the logo without fear of infringement.
8. Are fashion trademark
rights transferable?
In Canada, yes. I think there are some restrictions in the US, but I'm not sure
what they are.
9. When starting a business,
should I license my company as LLC or INC?
This is not my area of expertise; I can't help since my work is primarily in
the
10. What are the legal advantages
and disadvantages of a sole proprietorship?
This is something you can probably google, but off the top of my head, the
advantages are simplicity and ease of creation, disadvantages are no liability
protection, tax disadvantages and inability to persist after the death of the sole proprietor.
