'Branded community' leads to trademark morass

If you're creating a community for your company, think twice before you declared it "branded." At least that's what Rob Frankel of i-legions.com might want you think.

After publishing a blog yesterday on enterprise communities, Frankel sent me what appeared to be a cross between a sales pitch and cease-and-desist email claiming that guest author Aaron Strout's use of the term "branded community" was trademark infringement:

You probably don't know about us (http://www.i-legions.com -- TOTALLY different and way more effective, but that's another story), so I need to make you aware:

The term Branded Community® is a Federally registered trademark of ours. Your company should not be using the term at all without our express written consent. The article in this link is an example of your unauthorized use of the term:

http://blogs.zdnet.com/feeds/?p=155

Building or creating a "branded" community by either using open source technology like Drupal OR it can employ the services of a white label community provider like Awareness, Jive Software or Mzinga (the company I work for). This approach provides companies with benefits like:

Please refrain from using the phrase in any other current or future materials.

Our company, i-legions.com, provides revenue-generating Branded Communities® on a turnkey basis for brands with user bases. If you need to contact me, my information is below.

I had mixed reactions to this email. I couldn't decide if he was merely trying to get my attention so I would write about his company or he was serious about this trademark infringement claim. I'm still uncertain. But being a girl who prefers to be "better safe than sorry" I immediately changed Strout's "community" to "environment" and reached out to ZDNet's own Denise Howell for her legal guidance. She referred me to attorney Marty Schwimmer -- a source great for "all things trademark" and one quite familiar with the somewhat similar (yet much more prominent) O'Reilly "Web 2.0" debacle in 2006.

Schwimmer called out that Frankel has a registration to use "branded community" as a trademark for advertising services and confirmed that Strout's use in the text of an article to accurately describe a community sponsored by a brand (aka a "branded community"). It was "descriptive fair use of words in the English language."

Good news! Especially for the companies, analysts, journalists and marketing bloggers who according to Google have used the term "branded community" upwards of 10,000 times to do just that.

While I completely trust Howell's referral and Schwimmer's guidance I didn't stop there. I passed this letter onto ZDNet editor-in-chief Larry Dignan who consulted with CNET's legal team:

Jennifer's legal source is correct and Mr. Frankel is wrong. The blog did not make a trademark use of the phrase so no permission was needed to use the mark and there was no infringement of the mark by doing so.

This brings me to the bigger issue. According to i-legions.com Rob Frankel has been called "the best branding expert on the planet." Wouldn't the best branding expert on the planet be better aware of the uses of his own trademark -- as well as the detriment of sending a sales pitch mixed with legal jargon aimed at the blogger he is trying to educate?

I suppose that is one way of building a brand. The entertainment and media worlds are filled with shock jocks and rabble rousers who make names for themselves by creating controversy. However, is that good branding? And does such branding work for a company serious about attaining and retaining customers?