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Visualization Tool in Trademark Disputes

Challenge

I work as an intellectual property lawyer specializing particularly in branding and marketing related  matters. In my work, I often help businesses resolve trademark disputes, where on business  believes the other has adopted a name, logo or other branding element that is too similar to and,  thus, liable to be confused with an earlier trademark that they own. Such disputes are often  resolved through so-called co-existence agreements, whereby the parties agree on certain  modifications to be made to the junior brand to ensure that the risk of confusion between the two  brands can be mitigated.

Traditionally, co-existence agreements have been much like any other agreement, i.e. they have  described verbally what each party undertakes to do or not to do. However, describing verbally  how a brand may look going forward can be rather difficult, and such verbal descriptions are  necessarily open to different interpretations. Thus, traditional co-existence agreements can easily  become the subject of further disputes when the parties fail to see eye to eye on what exactly has  been agreed.

Selection

In recent years, I have started using visualization as a way to make co-existence agreements more  informative and less ambiguous. In other words, I have started including an annex with concrete  examples of what is meant by the wording of the agreement, i.e. what type of branding is permitted  and what is not.

The idea to use visualization in this way originally came to me in the context of a particularly  extensive dispute, where the parties had been struggling for a long time to even agree in principle  on what type of changes to the junior brand could form the basis of a co-existence agreement. By  creating some concrete, visual examples for the parties to discuss, they were finally able to start to  see what might be possible.

Application

Using visualization in the context of co-existence agreement negotiations is an iterative process.  Some initial discussion of what the respective parties’ interests and priorities are is necessary  before the first set of visual examples are created by one side. Once these have been created,  further discussion between the parties is needed to understand how well the examples correspond  to what the other party had in mind and what changes the other party might like to see made to  them.

Much as the negotiation of any type of agreement involves a lot of back and forth exchanges of  amended drafts, when using visual examples as a basis for the negotiations, it is helpful if both  parties take turns in modifying the examples until a compromise that satisfies both parties can be  reached. Once this is accomplished, the parties should still work together to extrapolate sufficiently  broad general rules from the examples, so that they can be documented in writing in the co- existence agreement.

Insight

The use of visualization to facilitate co-existence negotiations has been truly game-changing for  me and my clients. Although it requires a bit of extra work to create the visual examples, investing  the time to do so is worth it, because the visual examples generally help the parties to come to an  agreement faster. In addition, they reduce the risk that the parties will end up at odds about the  correct interpretation of the agreement down the line.

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I think that a key reason why visualization works so well in this context is that typically the people  involved in co-existence agreement negotiations are not just lawyers but also creative people from  the parties’ respective branding and marketing departments. For such creative people, it is much  more natural to consider and resolve problems visually than through the use of words alone –  which is often the default for lawyers.

Approach

While visualization in itself is a very helpful tool in the context of co-existence agreement  negotiations, such negotiations could also benefit from the use of other design thinking tools. In  particular, storytelling could be used to help identify different use-cases in which confusion  between the two brands could arise and to which the agreed rules should be applicable. In  addition, mind mapping could be used to identify where the parties’ views diverge and converge as  well as how the examples created could be extrapolated into more broadly applicable general  rules. Ideally, before finalizing the agreement, a learning launch could also be organized to make  sure that what works on paper also works in practice.

