'Branded community' leads to trademark morass

'Branded community' leads to trademark morass

Summary: After publishing a guest blog on enterprise communities, I received what appeared to be a cross between a sales pitch and cease-and-desist email from a branding business. How is this approach good branding?

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TOPICS: Tech Industry
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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?

 

 

Topic: Tech Industry

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48 comments
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  • It's amazing...

    ...not to mention disgusting, how many people seem to think it's okay to make a living by doing nothing more than threatening other people with lawyers.
    Henrik Moller
    • That's because...

      ...they see us all as part of the [i]original[/i] branded community: cattle!
      DigitalFrog
      • RE: 'Branded community' leads to trademark morass

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        just-do-it
  • RE: 'Branded community' leads to trademark morass

    If their letter achieved nothing else, it got them a bit of free advertising by mentioning their name and their business.
    ViRaL1
  • Trademark morass

    Mr. Frankel failed to notice that the post in question is a primer written by his Mzinga co-worker, Aaron Strout, VP of social media... Perhaps he should just walk down the corridor and take it out with him...
    Vanya Solntzev
    • You're kidding me...

      He made this noise about not just SOMEONE using the term but his fellow employee??? That's hilarious. I realize it may have been on purpose to get publicity(which may have worked), but did he not think it may make him look quite unintelligent?
      PBish
      • Clarification of Relationships

        Guys - just to clarify, I DO NOT work with Mr. Frankel. He works/owns a company called i-Legions. I work as the VP of social media for a company called Mzinga. I wrote the post - Mr. Frankel is the one that sent the legal request to have the phrase "branded community" changed.

        Thanks for chiming in.

        Best,
        Aaron | @astrout
        aaronstrout
        • request for clarification of the clarification

          Rather than clarifying, this makes things slightly more muddy.

          OK, Admittedly, Ms. Leggio makes at least one grammatical mistake (the dangling participle in her second paragraph makes it seem that Frankel published her blog). One hopes, though, that this doesn't lead to the mangling of this quoted paragraph from Frankel's email:

          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).

          The sentence doesn't parse, to start with, even if "Drupal", "OR" and "it" are all parts of the same software name. But unless the parenthetical is added by Ms. Leggio, Frankel is claiming that Mzinga is the company he works for. At first, I thought that meant something significant, now I don't know at all. Aaron, is it possible that Frankel does work for Mzinga in some fashion? Moonlighting? Contracting fluff-piece articles and adverts? Or is the claim of Mzinga being "the company I work for" inserted by someone else?
          tiorbinist@...
          • Oops

            Darnit, I thought I'd finally reached grammatical perfection. You'll have to let me know what that's like (and if there is a special jacket you get or anything). ;-) Yes, you're right, the dangling participle in the second paragraph was an error. But that has very little to do with the question at hand.

            Anyway, some helpful info:

            The paragraph mentioning Drupal, etc., was a direct quote from the letter that Frankel sent, as evidenced by the quoted block. And *that* was a paragraph he quoted from Strout's original article. When posting the letter I was torn between clarifying in the letter that it was a quote (even by adding some single quote marks) but was advised to leave it as it was sent. I also considered adding a note clarifying later that he was quoting Aaron's article but I was a) hopeful that readers would check out the original article to make a fully informed opinion and b) clearly wrongfully thought it was obvious that Frankel is with i-legions. There was also the line that called out Strout as the guest post author.

            On another note, if Frankel did work with Mzinga in any capacity it would've made for a completely different story.

            Hope this clarifies things. Greatly appreciate the constructive feedback. I'll be sure to watch those nasty dangling participles in the future. As for the grammatic structure of those who send me c&d letters -- only so much I can do. ;-)
            Jennifer Leggio
  • RE: 'Branded community' leads to trademark morass

    Well I guess there is the old "no publicity is bad publicity" but the article made Rob Frankel seem a bit uninformed, petty and over-reaching. So maybe he got some publicity but he certainly wouldn't get my business.

    dave anderson
    davea_hm
  • RE: 'Branded community' leads to trademark morass

    I think he got exactly what he was looking for. I had never heard of i-legions.com before ZDnet's mass email subscription landed in my inbox.

    Good job Mr. Frankel.
    tehremo
  • RE: 'Branded community' leads to trademark morass

    This is an inconstancy between us Fedral Law and in the case of UK law.Distinctly American Fedral law states ownership due to registration (first to register claims the prize) while UK law leans of common practice or usage.Hence the world has credited the Wright Bros was the first to make a powered flight in 17 December 1903.However there were many flights not recorded before this event that were also claimed to be mans first powered flight.It is unwise to register a brand that is in such common usage as you are always trying to defend it and wasting valuable resources in doing so.I must draw a conclusion that either he got bad advice or he is trying to get free marketing.Either way it certainly won't fly outside the US so way waste your time?
    The Management consultant
    • Actually...

      I doubt that trademarking a phrase like "Branded Community" would survive the first court test. Yes, you can trademark almost anything under U.S. Federal law, as long as the trademark folks don't recognize it as merely an attempt to lock up a commonly-used bit of verbiage. But the purpose of a trademark is as a tool in court to uphold your rights to the trademark when you try to stop someone else from misusing it. Just like a patent or copyright, it is granted (fairly lightly, these days), but has no actual strength without the ability to prosecute your given right in court.
      tiorbinist@...
  • RE: 'Branded community' leads to trademark morass

    I remember that game from the days of my childhood: We decided that the use of 'this', that' or 'or' was forbidden. He/she who first used it, had to pay a fine.
    I don't think it is a respectable business idea.
    eugen.wirsing
  • hilarious

    I think Mr Frankel may be looking for a job.
    Thank you for exposing this kind of internet Bullying and supporting free speech.

    Peter
    Me on the Island
  • RE: 'Branded community' leads to trademark morass

    Building a brand is about build brand values. Do you think that a brand that such negative connotations would be the first you would do business with. Brand equity is built up over time and is managed by experts to preserve its value. As an example people travelling by air may not associate the brand Pan Am as a reliable safe airline anymore due to negative connotations.

    Best advice get professional help a company is only as good as its people!
    The Management consultant
  • Do people really think Mr. Frankel was smart?

    Okay, so he got some free publicity. Well ESPECIALLY when it comes to something like branding do you think you'd want your brand associated with the idiocy of this guys method? I wouldn't and I also would avoid one that did. Shoot yourself in the foot didya Mr. Frankel? Seriously, if no publicity is bad publicity to the masses these days then it doesn't take much intelligence do effective marketing does it? Sorry, but I think that only works for established stars with a following and not brands.
    zdnet@...
  • Viral marketing

    Viral marketing SUX!.

    Or i must say Viral Marketing(tm) ?
    magallanes
    • re: Viral Marketing

      You can say "Viral Marketing", but I have registered "SUX".
      frylock
  • Silly Children

    Good article. i-legions.com sound like kids trying to get your attention, kids who are not as bright as they seem to think they are. Certainly a company to advise clients against.
    leeegeee