TEDx branding: A legal point of view | Opensource.com

TEDx branding: A legal point of view

Posted 05 Oct 2010 by 

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My friend and former colleague Chris Grams recently wrote a great article on the topic of extending the TED brand by allowing anyone to organize their own TED conference under “TEDx” branding. Chris posits that trademark law may be standing in the way of successful branding in today's business environment, where brands and brand affinity are built through community engagement rather than through top-down, owner-driven brand strategy.

I couldn't agree more.

As far as I'm concerned, it is the result of an unintentional and unnecessary disconnect between the realities of the marketplace and trademark legal doctrine.

First, some vocabulary. I sometimes find that the marketing folks talk about “brand” and the legal folks talk about “trademarks” as if they're talking about different universes. To me, a “brand” is the consumer's experience and association taken as a whole, and the “trademark” is the legally recognized visual and/or aural identifier that is the tangible representation of the brand. Trademark law has always been, at least in part, about protecting the brand owner, so there is no good reason that trademark law should be inconsistent with the interests of the brand owner.

But the law moves slowly. Trademark law as it currently exists developed at a time when the trademark owner was the manufacturer and completely controlled its brand identity. This dated law creates legal risk for what might otherwise be perfectly sensible branding practices in today's complex commercial and social environment.

One area of risk is the possible loss of rights through trademark abandonment. Traditional trademark doctrine says that if the trademark owner doesn't “control” the quality of the goods and services with which a mark is used, then the trademark may be “abandoned” – that is, the trademark owner loses all rights to enforce its trademark against others, irregardless of how strong the trademark actually is. Another is “genericism,” when the trademark becomes the name everyone uses to describe the thing and it loses its significance as a brand identifier altogether – Chris's aspirin, escalator and zipper examples. (And for those of you who don't think it happens? Ask Intel what happened to its “386” trademark. Yeah.)

Unfortunately, these existing trademark doctrines pretty directly collide with Chris's philosophy that brand significance can and should be built through looser control by the trademark owner and greater community engagement. The lawyer's nightmare is that ceding too much control for brand identity over to the community might mean the entire forfeiture of the brand. In reality that's probably a low-probability event, but lawyers have to plan for the worst-case scenario. So we have to put the brakes on, not because we want to, but because our job is to keep the brand safe in the legal environment that currently exists. So forgive us our nay-saying: we're trying to protect the brand too.

But the law developed for a reason. The role of the trademark is to act as an identifier for known source or quality. My question back to Chris is - what if the community doesn't act in the best interest of the brand? What if the trademark is used in so many different ways that the consumer doesn't know what it's getting anymore? This is a topic of frequent discussion in open source circles, where some constituents have a hard time understanding why trademark owners like Mozilla and Fedora put restraints on when and how someone may use the trademark. What if, for example, a downstream distribution is changed so much that it breaks the functionality, but the distro is still branded as Authentic Open Source Project? In that case, hasn't the branding function failed? Isn't that a risk in the community process?

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2 Comments

cgrams
Open Source Champion

Hi Pam-- that question "what happens if the community does not act in the best interests of the brand?" is a very interesting and complex one.

For example-- who is the ultimate arbiter of what is best for the brand-- the community (if it is truly a community brand) or the company or organization that owns the brand trademark?

And are we really asking what is best for the _brand_ or what is best for the _organization that owns the brand_? The distinction is important.

So although the question is complex, the reality is that if you get to the point where you are having to make distinctions like the ones I'm making above, the answer to the question may actually be very simple: "bad stuff happens."

Maybe we re-frame the question a bit so that we don't get to the point where we have to answer your question:) How about something like:

"How do you design a community model that gives community members a strong incentive to act in the best interests of the brand?"

My view is it starts with the organization that owns the brand trademark and the brand community having a shared purpose. If the community has the same end goal as the organization that owns the TM (and community members are working together to support this goal), there is a higher likelihood that they will agree on strategy for the brand.

I also wonder whether the design of the community has to ensure that enforcement of brand usage / standards is ultimately the job of the community and not the TM owner. The sheer leap of faith/act of trusting the community to this important role may also help with alignment.

The honest truth is there is no simple answer here, and these are important questions that I bet many community brands are grappling with right now.

It's an interesting discussion... I would love to hear others with experience trying to manage community brands weigh in with their thoughts.

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Christopher

This could be an opportunity to innovate. Devise an elegant solution to a complex problem. Whatever happens, I think it is important to not back away from an idea just due to a legal roadblock. Acknowledging the obstacle is important, but finding a means to overcome it would certainly set the brand apart from everyone else.

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Pam, formerly Manager, Senior Intellectual Property Counsel for Red Hat, is now the principal of Chestek Legal in Raleigh, North Carolina. She works with creative communities, giving practical legal advice on branding, marketing, and protecting and sharing content. Pam has authored several scholarly articles, has a legal blog at

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