On Friday, I received my first cease and desist email. I consider this quite a milestone in my life as a blogger.
Date: Fri, 28 Apr 2006 15:56:03 -0400
Subject: Ebranding
From: "Gavan Howe" <[email protected]>
To: kate
CC: "Nancy Miller" <[email protected]>
Kate, please be advised that Howe Brand Communications is the registered owner of the trademark: ebranding and would ask that you cease and desist form [sic] using out [sic] mark in any fashion
Canadian Trademark # TMS 573,202
Gavan Howe
Really? "ebranding" is trademarked? Interesting. So, I checked it out in the Canadian Trademark Database. A quick search on "ebranding" verifies Howe's claim:
ebranding
INDEX HEADINGS:
EBRANDING
BRANDING, E
SERVICES:
(1) Interactive media communications services, namely the creation and development of communications strategies, creative development and execution of advertising materials, and media planning and execution for web sites.
CLAIMS:
Used in CANADA since at least as early as 1996.
I also checked out Howe's site to see how he uses "ebranding". Howe Brand Communications describes "e-branding" as:
“e-branding”™ is the creation and development of communications strategies specifically for brands to have meaning and context on the web. You can never smell a steak sizzling on the web.
e-branding™ our creative strategies sprang from the reality that traditional, terrestrial brand positioning strategy doesn’t always work on the web. In late 1996 and early 1997 while working to develop the Bayer Aspirin* web site, we found that in these early days, there was no clear thinking on how to effectively take a land based brand, to the web.
Curiously, Howe uses "e-branding" and not "ebranding" on his website which is the trademark; does that little hyphen makes a difference? Law-talkin' folks - if you're reading this, I've love to know.
Now, I've read enough cease and desist emails on other bloggers sites to know that the main reason that Howe has to send emails like this is to protect his trademark. My understanding is that in order to retain a claim on the mark, he has to take reasonable steps to protect it. Now, it seems to me that ebranding has become a relatively common term, but I wasn't sure. To Google!
A Google search on "ebranding" yields 29,500 results. A search on "e-branding" yields 148,000 results. Howe has his work cut out for him. But maybe he only needs to protect it in Canada. "ebranding Canada" turns up 4,500 results and "e-branding Canada" turns up 9,930 results. In both of these, I turn up on the first or second pages. But, wow, I am not the only one. Howe has some late nights of emailing ahead. Canada Post even seems to have an individual whose title is "Manager of eBrand Development". Will he have to change his job title?
I actually don't have any issues with Howe asserting his trademark. I believe I am violating it in two places: my Bio Page and my Typekey profile page. These have now been edited. I'm just not sure it's a useful exercise. That's the trouble with trademarking words like "ebranding" or "emarketing" or "ebusiness". Following their initial coinage, a critical mass is reached and everyone starts to use the term.
I searched in the Canadian Trademark Database for "emarketing" and "ebusiness". There were only three claims containing "emarketing". Two of them were just on the word "emarketing" and were abandonned. The third uses "emarketing" in conjunction with a business name "Planet Emarketing". This seems to be a highly defensible trademark, rather than just the word. It's similar for "ebusiness". None of the 23 claims have "ebusiness" on its own. A number of the claims were abandonned. Two of the most recent I found were for "enabling eBusiness conversations" and "eBusiness conversation manager", trademark applications filed by Ogilvy Renault and recorded as recently as April 13, 2006.
So, the point in all this is I understand the cease & desist, but I question its efficacy at this point. Will Howe Brand Communications ever be able to assert its full right to the Canadian trademark and become uniquely associated with the phrase "ebranding"? I don't think they will. This also gets tricky on a domain level; Howe owns ebrander.ca and ebranders.on.ca, but not ebranding.ca, ebrand.ca or ebrands.ca. How's *that* all going to play out? I'll be interested to see if this trademark assertion means that Howe Brand Communications is making a move for a more prominent position in the Canadian online branding consulting space or if there is a plan to perhaps sell their intellectual property in their ebranding [tm] process.
Tags: ebranding, trademark dispute, cease and desist, Howe Brand Communications