Cautionary Tale: Hire Trademark Attorney or Change Name -- Three Times
The Seattle Times’ Feb. 15 Retail Report offers a cautionary tale for business owners who adopt a trademark before talking to a trademark attorney:
”Zenith Vineyard in Oregon’s Willamette Valley might win the viticultural prize for having the most names in the shortest period. D.A. Davidson food-industry analyst Tim Ramey settled on Zenith after trademark disputes over his vineyard’s two other names.
“Two years ago, London-based Diageo opposed the first name, Belle Provenance Vineyard, saying it was too close to that of Provenance Vineyards in Napa Valley. Ramey then tested the name Belle Orgine Vineyard but ran into trouble with Albertsons over its private-label wine called Origin. Finally, last year he changed the name to Zenith Vineyard.
“‘We were never willing to hire a trademark attorney for $10,000, so that’s why we got all this wonderful on-the-job education,’ Ramey said.”
This is frustrating for a trademark lawyer to read — though obviously not as frustrating as it was for Mr. Ramey to live through. For one thing, it doesn’t cost $10,000 to talk to a trademark lawyer. But even if it did, think of all the goodwill that Mr. Ramey built up and then lost in his first brand, then built up and lost in his second brand, then had to build up again in his third (and hopefully final) brand. Not to mention all the money he invested in advertising, marketing, signage, and labeling for all three brands. I’m sure to Mr. Ramey, $10,000 now sounds like a bargain.
Learn from this gentleman’s mistakes. Invest in strategic trademark advice up front so you don’t waste precious resources later on.
Michael Atkins
Mr. Ramey contacted me this evening about this post. I want to say I am sorry if it caused him any embarrassment or distress. That certainly was not my intent. I didn’t know anything about the facts underlying the story other than what I read in the Seattle Times, which I posted in full above. Mr. Ramey says he did not build up or lose any goodwill in his first or second brands. He also says he didn’t invest any money advertising or developing his brands, and did his on-the-job training when it didn’t have an impact on his business. I trust what Mr. Ramey says is true, and I apologize if I led anyone to think otherwise. I wish Mr. Ramey and his company nothing but the best.
Michael Atkins
in Seattle Updates, Trademark Infringement
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Reader Comments (4)
Lawyers need to understand, however, that they must be able to explain the return on investment of a trademark availability search and registration. More specifically, educating the client about the inherent risks and potential liability for such actions as trademark infringement are necessary to justify the $10,000 expense. In addition, there should be a myriad of services (with a corresponding price) that coincides with the goal of the business owner. While $10,000 may be reasonable for a company that will be basing its entire operation off of the trademark, it may not suit the start-up that simply is exploring a new business area. Nonetheless, a cheaper, and less intensive search, can still provide value and identify obvious risk items.
Ultimately, in today's e-commerce driven economy, the selection of a trademark and corresponding domain name requires the same amount of attention and care as the selection of a building for a brick-and-mortar operation. The above case has provided the "on-the-job education" already. Listen to Benjamin Franklin and talk to a trademark attorney.
"even if it did, think of all the goodwill that Mr. Ramey built up and then lost in his first brand, then built up and lost in his second brand, then had to build up again in his third (and hopefully final) brand. Not to mention all the money he invested in advertising, marketing, signage, and labeling for all three brands. I’m sure to Mr. Ramey, $10,000 now sounds like a bargain."
If Mr. Atkins research of his web content resembles his legal work... well let's say we are likely better left to our own devices. I'm glad I still have my $10,000 and I've learned a lot about trademark law.