A few years back our litigation team was faced with a seemingly insurmountable task: how to defend our client’s trademark rights against a Fortune 500 company with a massive litigation budget. They had the facts on their side. Moreover, they had money. Worst of all, they had a gaggle of lawyers that just made the case down right unpleasant. In spite of this, as luck would have it, they were missing one very crucial thing that they had never learned in law school. Something big firm life had failed to teach them. Quite simply, they were limited in their thinking to that which was rather than that which could be.
Looking beyond conventional defense methods, we deconstructed every element of the case until we discovered a plan to turn the tables. In trademark law priority of use is everything. Whoever is the first to use a specific trademark typically wins an infringement case, especially where the trademarks as well as the goods and services of the parties involved are very similar if not identical. At any rate, the other side had priority of use. The trademarks were very similar. The services were almost identical. We might as well just throw in the towel, right? Wrong!
In thinking beyond the realm of traditional defenses, we wondered what if we could find someone else who had priority of use associated with their own trademark that preceded that of the opposing party? What if we could find this mythical entity and purchase their rights to their trademark, thus acquiring their earlier priority rights as compared to those of our opponent? Could it work?
Well, not only could it, it did. After a brief search we found a small company in a Midwestern state that miraculously had been using the same trademark as our opponent for more than 50 years. They were considering closing their business already when we arrived and bought them out for a fraction of what it would have cost to defend the case in court. After acquiring their trademark rights including the priority of use date prior to that of our opponent’s first use date, that gaggle of lawyers quickly moved from shooting at fish in a barrel to being the fish in the barrel. The case settled within days.
How did we do it? How can you? Sometimes when you are losing in a game you have to stop playing by the rules, switch it up, and change the game itself.
People often speak about thinking outside the box, but how do you really do it? What does it mean to be limited to inside the box as opposed to being outside? The key is to define the box in any given situation and then to seek alternative, often unconventional solutions that would be considered beyond the norm.
When you are faced with a seemingly insurmountable obstacle, train yourself to not merely focus on the specific issue at hand but also think more expansively about all of the reasons and the paths that led to the issue. Consider every possibility and hypothetical alteration of that reality along the path, never being dismissive of anything. When you do this, alternative solutions will often materialize giving you options you did not see when narrowly focusing on a specific issue.
Here are a few tips that we have learned along the way that have aided us in getting outside the box:
1. Identify the issue.
2. Determine whether a regular or typical solution to the problem exists.
3. If one does, you’re done. If no, map out everything that went into creating the issue. In this aspect, be expansive. Include everything possible.
4. Once you start mapping out the issue more completely, start looking for ways to address the situation in one of the more outlying areas that was not considered previously.
5. Never dismiss a possible solution on the basis, “It simply cannot be done.” Consider everything. Go through every possibility until you know for a fact it can or cannot be done.
This is exactly the way we won the case referenced above. If we thought inside the box our thinking would have been:
1. Can we defend on the grounds the trademarks are not similar? No.
2. Can we defend on the grounds the trademarks are used on different goods and/or services? No.
3. Do we have priority of use? No.
In thinking outside the box we began looking at how did the opponent acquire their trademark rights they are now asserting against us? Could we acquire trademark rights that are superior to theirs? We could if there was another company out there using the same trademark as our opponent before they did that would be willing to sell it to our client for a reasonable price. Well, let’s see if we can find one. And we did.
Teach yourself to look at problems more expansively. Never be dismissive of a potential solution before you have thoroughly thought it through. Think outside the proverbial box.