What’s My Trademark Worth?

Valuing a trademark owned by a smaller company is tricky business.

We know the value of a particular used car because people buy and sell similar used cars all the time but it’s rare for any trademark to be sold all by itself.

My client was approached by another company that just happened to use my client’s trademark in Europe. The European company wanted to use the same brand when it launched in the U.S. My client didn’t know whether the offer made sense. Here’s what we looked at:

  • Cost to have a branding company come up with new branding identity package
  • Cost of advertising to get the word out about the rebranding
  • Loss of sales from lost brand recognition
  • Legal fees and filing fees to register new word mark and logo
  • Cost to acquire new domain name and social media handles if they aren’t readily available
  • Cost of new signage and collateral
  • Cost to revise website with new brand identity
  • General headaches and admin time

This same analysis can help if you’re in a dispute over a trademark and the other side has offered to buy you out but you also need to think about:

  • How strong are your rights vs. rights of the other company (are you likely to win a dispute)
  • Cost to fight (legal fees, personnel time to support litigation)
  • Cost of uncertainty while the dispute’s going on

Valuing a trademark is more art than science but it’s not just throwing darts.

Shout out to Amanda C. for asking the question that led to this post.

Legality vs. Morality

A white super model is photographed wearing a Dior® vest to the Met Gala that says “Peg the Patriarchy.” It’s reported that “Luna Matatas, a Toronto-based sex educator, artist, podcaster, and queer woman of color” owns a trademark registration in Canada for PEG THE PATRIARCHY for clothing.[1]

Dior and the model are appropriately called out for the appropriation.

Dior’s providing the vest to the model was wrong but was it trademark infringement?

The Canadian trademark registration covers shirts, so putting PEG THE PATRIARCHY on any type of garment in Canada would be trademark infringement.

But what about in the United States? There’s no U.S. trademark registration. I don’t know whether Matatas sold PEG THE PATRIARCHY items in the U.S. but let’s assume she did. Has Dior infringed trademark rights?

Under U.S. law, you can’t have trademark rights or get a trademark registration for a word or short phrase that’s use is “merely ornamental.” Use of a trademark across the front of a piece of clothing is considered “ornamental use.”

Based on what I see in the photos, the use of PEG THE PATRIARCHY is “merely ornamental”, ergo, Matatas doesn’t have exclusive rights to put that phrase on clothing in the United States and Dior hasn’t infringed.

Basic morality should be the same everywhere but trademark law differs from one country to another in lots of ways. It’s important before beginning use in a different country to figure whether it’s legally permissible.

Shout out to Miles C. for bringing this fiasco to my attention.

[1] The listed owner of the registration is Nicole Ghanie.