Trademark disaster recovery cost: the Amazon.com little known close call
Attorney Michael Lasky discusses why it is important to search for a trademark using the mistake of billion dollar company Amazon.
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This video is going to be the world’s shortest horror story but it is a horror story and the purpose of it is to try and get you to believe that what we do with trademark searching can make or break the company. It is really important and it’s not generic stuff. There’s good searches and there’s bad searches and you need the best search because the cost of a bad search is much higher.
The story is about Amazon.com. I can only tell you great things about Amazon with respect to brands because they have selected an outstanding brand. Had they called themselves books.com where would they be today? It’s a great brand, it’s really strong, and it’s got elasticity they can go where they want. They can go wherever they want. And in our system, we have three trademark systems together, it’s the federal registration system, which you know of as the federal trademark, each state has its own registrations which are of nominal value. And then there’s the killer stuff, which is the common law, unregistered trademarks. Those are the people who use the trademark but don’t bother to register. In the United States, we accept that, it’s okay, and they get trademark rights just by using their trademark. Don’t do it that way it’s a bad way to do it but they’re out there and we have to find them.
So what’s this? Well, this is a picture I actually took and I had been driving by this bookstore every day for 20 years and never gave it the slightest thought. They started 15 years before Amazon.com and one day they called up Jeff Bezos and said we love what you’ve done to your brand, excuse me, we love what you’ve done to our brand and we would like it back. And you know, tomorrow you can start at as Quark.com but we own Amazon. And they filed a lawsuit in the federal district court Amazon Bookstores, Inc. v. Amazon.com and they were fixing to get the brand back.
The case settled but it was really close in the sense that Amazon.com was the second user, Amazon bookstores was in a lot of markets and they were clearly first and the marks were the same. That is a place you do not want to be. If you are Amazon.com, you’re a public company and tomorrow you’re Quark.com you are nobody. You don’t want that happen.
So what we do is we do a first look search to find the ones that are registered and that will cut out 50 or 60 percent of them. But then we go deeper and try to find the ones that aren’t registered we do that as a comprehensive search and that’s a big deal. And you want that because the cost of the search is the cost of the search. It’s the cost of disaster recovery you do not want. And like Bezos, you will find that out not on the day you open but on the day you are super successful and somebody shows up and says, by the way, that’s my trademark.
So that’s why trademark searches are important and that’s a little bit about how we do them. Thanks very much.