Trademark and Fair-play

Tim O’Reilly has said his piece about the Web 2.0 trademark affair, in a way that every entrepreneur should read to understand the working practice of trademark law.

A few years ago I had a consulting company called Mayfield Enterprises. Makes sense for a sole-proprietorship, my last name and what I do. Then I got a cease and desist letter from Wilson Sonsini on behalf of the Mayfield Fund, which had recently changed it’s trademark to Mayfield (I’m not linking to them in hopes of becoming the one true Mayfield by web standards, but I hope I never beat out dear old Betsy). At first it was a bit terrifying, big money, big firm with firm verbage. So I called up the lawyer, let him know my name and what I thought was fair, as in use. The poor guy was subjected to a history lesson, as the Township of Mayfield used to be South Palo Alto. It’s where I was raised and long before that Leland Stanford successfully triumphed over the rowdy bar town outside campus limits.

Just as Tim described, the left hand often doesn’t know what the right hand is doing when it comes to trademark. Later I got to know the partners at the Mayfield Fund. Whether they have good judgment or not, it wasn’t exercised in the fore-mentioned case. The lawyers were on autopilot in an area where current practice is to fire across the bow.

I believe trademark has valid utility in this world and had significantly greater incentives for cultural production than copyright and patents. There is more than merit for how it deters consumer confusion. I wish for a model that was not defensive (file, search, cease and desist), but instead at least a partial preventative model (regular people could easily run a search before first use) or one where the escalation chain was encouraged to use mediation and arbitration for disputes for parties that first meet through conflict.

Lately I’ve written personal emails to wiki providers that infringe on the Socialtext(TM). A while ago, someone agreed alter their mark amicably to prevent conflict — the kind of thing that can happen through conversation to the benefit of both parties with significantly lesser cost. More recently, the personal approach didn’t work with a company in South America and I’m trying to avoid action. Worse yet, there is a company in Estonia that not only uses a infringing mark, but has copied our product and collateral at every turn. This saddens me because I know how innovative companies in the little country can be, and I wonder how any self-respecting businessperson could have so little faith in their ability to do something different. The company obviously knows me, but has never attempted contact. I’m challenging the infringement, as is my fiduciary duty, but it pains me to do so.

The practical reality of my growing business is I don’t scale, and such activity will be increasingly impersonal. The primary question to me is if you consider the personal productivity, legal and social costs — if management can be involved in mediating the cease and desist function. Perhaps this can be justified if it decreases costly litigation. But there is a question for if the activity is core or context.

I’m wondering if people can see the side of running a business in the current environment, and if this is fair play. Particularly if you have been on both sides of the argument.

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Ross Mayfield is CEO and co-founder of Socialtext, an emerging provider of Enterprise Social Software that dramatically increases group productivity and develops a group memory.

He also writes Ross Mayfield’s Weblog which focuses on markets, technology and musings.