By Carrie Bader
Legal and marketing departments might sometimes seem like oil and water. Ask trademark lawyers about marketing or vice versa, and you might see some exasperated eye rolls. We’ve heard the stereotypes: The creatives in marketing don’t take risks seriously. Legal always puts the kibosh on our ideas.
It doesn’t have to be this way.
With a little flexibility and communication on both sides, intellectual property and marketing teams can collaborate on new projects like product names, concepts, and presentations with maximum efficiency and minimal heartbreak.
If you get nothing else out of this article, remember this: Communicate, early and often.
Many trademark attorneys have received that call from marketing at 5PM: We’re launching a new ad campaign (or product line, packaging, etc.) on Monday (or tomorrow) and we need you to take a quick look and make sure everything is okay.
For IP attorneys, a “quick look” is usually anything but quick. Often, it requires clearing a new trademark, or at the very least making sure a new tagline doesn’t infringe another company’s trademark. Depending on the situation, other legal questions will arise. For example, comparative advertising might walk a fine line between simply mentioning a competitor and disparaging it. Influencer posts need to contain certain language to avoid running afoul of Federal Communications Commission regulations. These or other context-specific issues might come up based upon a single, seemingly simple request.
IP attorneys don’t want to say “no.” We usually don’t even want to say the ever-frustrating “it depends,” though often that is the answer. We want to help marketing find a way to do what they want to do. But in order to provide the best (and most timely) advice, we need to understand the new initiative and its context as soon as possible.
Lawyers can take a key role in the creative process by making themselves available to marketing before issues even arise. Back in the old (read: pre-2020) days, the advice would be to take your marketing counterparts out for coffee. Depending where everyone in your organization is now, it might be a little more complicated than simply walking down the hall and knocking on doors, but opening the informal lines of communication is worth the effort.
Beyond simply talking, there are some tips for both legal and marketing to help them both get the most out of the relationship. While these tips are crafted with an eye towards in-house marketing and legal teams, these are equally applicable to communications between marketing and outside trademark counsel.
Tips for legal:
- Educate your client: Inviting your colleagues from marketing for coffee or a Zoom lunch is an important first step toward keeping everyone in the loop, but it’s only the beginning. Set up a “Trademarks 101” session or create an FAQ on trademark usage and best practices. Make a list of the common issues that arise on those 5PM calls – Why can’t I use this as a trademark? What am I allowed to say about a competitor? – and turn that into a half-hour presentation.
- Understand the company’s risk tolerance: Some companies are more conservative, while others steer a little closer to the edge. The risk your client may accept for a limited ad campaign will be different from the acceptable risk for a new blockbuster product launch. It should go without saying that your advice must be complete and ethical. But within the bounds of ethical lawyering, appreciate that there are nuances and no one-size-fits-all advice.
- Speak your client’s language: One of the most common refrains from lawyers who have recently made the leap from firm to in-house is that they learn quickly that the client doesn’t want a memo. In addition to understanding your client’s common questions and risk tolerance, learn how they like to receive advice. Your communications should be concise and actionable.
Tips for marketing:
- Build in some turnaround time: It can be difficult to remember to loop in legal during the creative process, but you will have better overall results if clearing legal isn’t a checklist item toward the end. If you have a major new initiative, invite someone from the legal department to sit in on major meetings. Even if they don’t give specific legal advice at the time, it will be helpful for them to know what’s in the pipeline.
- Prioritize: You’re in the idea phase and don’t know quite how things will work out. Of course you want the brand to grow to a wide product range and sell in key markets around the world. The legal department does want to know about the long-term goals for a brand and if you have a top 2 or 3 brand names or marks you are considering, shoot those over to legal for an early check. This helps avoid risks that can already be caught early, before a lot of time and money are spent developing a brand design that will ultimately get nixed by legal. It’s also helpful to prioritize the most important products and markets to get the most realistic picture of the risks and potential costs.
- Understand the process: As you likely know, the first step in the trademark clearance process will likely be a preliminary search to identify red flags, usually registrations or applications with the U.S. Patent and Trademark Office. (This preliminary search might also be called a scan search or a knockout search.) While a Google search by marketing will not often be sufficient to clear this hurdle, your counterparts in legal will want to know if you’re already aware of potential risks. This is particularly helpful because marketing and sales usually have a ground-level view of what’s happening in the field. After that, and if you’ve cleared the knockout search, legal will often advise to go ahead with a comprehensive clearance search of multiple databases (Federal and State registries, business registrations, common law use, and web usage). The comprehensive search can take several days to complete, so it is important to let legal know as soon as possible if you are going ahead with a particular mark. In addition, the USPTO has experienced significant processing delays over the past couple of years. It can now take months longer than normal to learn whether the USPTO has flagged a third-party registration against your company’s application. This complicates risk management and long-term planning for both domestic and international trademark filings. All of this underscores the benefit of legal and marketing engaging as early in the process as possible.
The best working relationship between legal and marketing requires intentionality on both sides. The inevitable give-and-take is an important part of the process, but these two departments can be valuable partners for the company’s brand goals.