Matt Myers of M22 discusses the process of creating their brand, obtaining trademark registration as well as what to do to protect the trademark. Every day companies spend massive amounts of time and money to create and market their brands to the consumer. Keegan and Matt Myers of M22 discuss with Attorney Enrico Schaefer, the process of creating their brand and how to correctly register a trademark, as well as what to do to protect it.
"...trademark registration process at the USPTO, The United States Patent and Trademark Office,...we were able to receive a registration for the trademark M22 in order to protect Matt and Keegan moving forward."
"For a lot of clients, the first step is a trademark cease and desist, notice and threat letter that says we have the trademark registration for this, you’re infringing the mark and you’re potentially liable for up to $100k and attorney’s fees and statutory damages for infringement, we demand you cease and desist, etc."
"In many cases...the first step is a trademark cease and desist notice letter saying...you need to understand that we have rights...provoke a discussion to get them educated...provide them a quick and easy exit..."
Announcer: Welcome to Trademark Law Radio, sponsored by Traverse Trademark Law, Internet Lawyers specializing in Trademark Infringement, Trademark Licensing and Trademark Registration. Now here is your host, Damien Allen.
Damien Allen: Good morning and welcome to Trademark Law Radio. My name is Damien Allen, and today joining me on the phone are Keegan and Matt Myers of M22, and Enrico Schaefer of Traverse Legal, PLC. Good morning gentleman and welcome to the program.
Keegan, Matt and Enrico: Good morning.
Damien Allen: Well, today we’re going to have an open-ended discussion about protecting your trademark, protecting your brand. Matt and Keegan, you are the owners of M22, a store in Traverse City. What is the origin of the brand and what is it that you guys do?
Keegan: Ok. M22 started. We still do kiteboard basically all over the world and we’re from this area. When we started getting into the sport, we ended up out in Leelanau County along M22, that’s where all the best spots where for the sport of kiteboarding. So, kind of as a joke we made some t-shirts and hats with stickers with the M22 logo on it for the core kiteboarders because that was place where everybody was always at and ended up doing a feature story with Traverse the magazine for our kiteboarding school, which is Broneah Kiteboarding and once that feature story, which did have cover shot, hit the stands, I happen to wear an M22 shirt that day at the photo shoot not planning on promoting M22 or anything and once that magazine hit the stands it was people contacting us non-stop wanting the t-shirts made and it got to the point where we realized it could be brand and that’s when we were introduced to Enrico. We told him our idea and we knew that the first step in this process was to protect it because people would obviously think they can’t protect it because it’s a road or this or that, when we knew it could be legitimate brand and that’s why we did that and took that task, first off, before we really launched it into like a retail program.
Damien Allen: Enrico, is there a difficulty in trademarking basically a road sign or the steps they had to go through in order to get this brand trademarked?
Enrico Schaefer: Really, it wasn’t any more challenging than any other trademark out there. There’s a difference. The road sign as a road sign as what everyone sees on the side of the road. But to turn a logo or an image such as a road sign into a brand which identifies itself in the relevant community which identifies the source and origin of goods is, number one, a tremendous investment in both time and money which Matt and Keegan made in order to capitalize on their idea and once it’s a brand, once that M22 logo means more than road sign, it means an identifier of goods and services, then it’s a trademark just like any other logo. So, you run it through the trademark process, the trademark registration process at the USPTO, The United States Patent and Trademark Office, and that’s a process that takes quite a bit of time and effort and on the backend of it, not unexpectedly, we were able to receive a registration for the trademark M22 in order to protect Matt and Keegan moving forward. So, as they continue to poor a lot of time and a lot of money in expanding the brand and creating the brand, it’s becoming identified with the brand, that they didn’t have to worry about copycats coming in and piggybacking all that success and all that money and all that time that someone else put into it. And so, it does sometimes come back to us that, hey, how can you trademark a road sign? People sometimes are a little bit confused about that but more often than not, once you explain to them that Matt and Keegan were the ones that had the idea. Matt and Keegan were the ones that created a brand. Matt and Keegan are the ones that put in a lot of time and money into creating the brand that now exists, not only all over Northern Michigan, but throughout the state and country, and you see the mark used throughout the world. And so, just like Highway 1 and Route 66 have been brands in the past, M22 is now a brand. And so, anyone can use M22 non-commercially. They can use it if they want to draw painting, if they can take a picture of it, they can do all the things that they’ve always done, but they can’t use it as a brand. Matt and Keegan have the exclusive right to use M22 in business and it was brilliant and they deserve to be rewarded for that.
Damien Allen: Well, Matt and Keegan what steps do you guys take as business to protect your brand name besides the trademark registration? Is there something that you do to police the brand? Are there services you use outside of Enrico’s services to make sure that your brand is being protected and being used properly?
Keegan: Well, certainly. One of those main things that we do and spend a lot of time doing is researching, basically. Looking online, looking around. Anytime there’s even somewhat of a similar operation being started, someone will contact us, so we have a lot of eyes and ears out there looking for us and it’s our goal to find people that are doing anything even similar to it right away. That way, we can let them know our rights, basically, what we’ve created here and try to really get them out of it before they invest too much because we don’t want somebody to try to start something up similar and think that it was a good idea for those guys, I’m going to make it work for my highway in Northern Michigan. That’s something that can’t happen because we have too much customer confusion anytime that starts something new, we instantly here about, and the main reason we hear about it is because the person thinks that we created it, that we started it. So, that’s what we’re really trying to avoid. We’re really protective for our brand and how it’s being shaped and we do not want people to copy it and do something that isn’t to the standard that we would want it to be to and that’s why it’s so important to us.
Enrico Schaefer: Let me jump in there. I think people, more often than not, just don’t understand trademark law. So, a lot of the folks who might come up with something similar, they do so, not maliciously, they do it because they just don’t understand that registered trademarks are protected, number one, and , number two, that the trademark registration protects anything that might be a little confusing. And so, if someone were to talk a different road sign, something different than M22, M37 or something like that. Just because it’s a different number than M22, that’s not the test. Trademarks protect around the mark. They protect anything out there that might cause confusion as to the source and origin of goods and because of the tremendous success that Matt and Keegan have had with the M22 brand, anyone who does anything similar it automatically consumers believe that’s Matt and Keegan, their extending their brand into this new area, and trademark law protects that. And so, not only can you not M22, you can’t do anything that would create confusion about source and origin. Once you explain that to people, more often than not, they’re good to go and they understand and we’ll sometimes let them exhaust their inventory and then agree to cease and desist. And Keegan’s right. The earlier you get people in the process, the easier it is to get them educated and help them understand and to give them exist. The third thing that people don’t understand is that if they copy what M22 has done, that they can be liable for bad faith trademark infringement for willful trademark infringement and that could be a tremendous liability. It’s up to $100k in penalty damages, plus attorney’s fees. So, there’s a lot of liability if you go to copy what someone else has done, if it’s trademark protected.
Damien Allen: Do you find that there is a lot of imitators out there that this brand is open to so many attacks or so many copycats?
Keegan: I would have to say from our experience over the past two years, definitely. I basically look at it, like, people trying to look at the mark and it’s a very simple mark, and they just look at it, like, it’s such an easy thing for them to go do, and we’ve seen people do that. But, I’ve learned from Enrico after the first few years of getting this brand going and really thinking about it, we were the first people to conceive of this. I mean, why wasn’t it done five years ago, ten years ago. Nobody actually put the pieces together. Everybody says, oh, that’s brilliant, I should have thought about doing that. But, nobody did. Certainly not to the extent that we’ve done it, so, it really is one of those, it’s an idea we had and it worked. That happens, it’s America, it’s a free country, people want to jump onboard and try it to and we need to protect that.
Enrico Schaefer: No question about it that there’s factors that I see playing into the copycat phenomena. One is that the business model, the business that M22 has created is so successful and imitation is a most sincere form of flattery and all that jazz really has played out here. We fight people off continually and like I said, more often than not, it’s not malicious in the sense of their attacking the trademark, it more often than not, it’s just simply a lack of knowledge about trademark law and a lack appreciation for the fact that no one ought be able to go in and leverage the Nike Swoosh. Nike invested millions, tens of millions, hundreds of millions of dollars to turn that into something. It’s a simple little mark, a Nike Swoosh. To allow someone else to come in and with no investment, leverage all that success, that’s not right and it’s unlawful. So, the first factor is that, you know, kind of this success factor makes people want to say, well, I’m going to copy that. The second thing is obviously the road sign factor which makes people believe that it just can be a free for all. And in the commercial space, when you’re a business, only one business at a time gets to use the trademark. And that’s there to protect consumers and you can’t have anyone else using the M22 mark because consumers won’t know who they’re dealing with. And, Keegan’s right, there’s a quality standard, there’s a customer service standard, there’s a standard here that’s being protected. M22 means something more than the road sign and consumers deserve to be protected from imitators and copycats.
Damien Allen: Now this protect for the brand, the M22 brand, the State of Michigan state highway sign is black square, white diamond, black letters M22 in the middle. This covers any of the state highway copy. So, if I was to say I wanted to do M72, it would be the same type of logo design, black square, white diamond, black letters saying M72. M22 would then have the protection of the brand saying now I couldn’t use M72 because we already have M22. Is that my understanding?
Enrico Schaefer: Potentially, yes. These are all fact-specific. It would depend on how they used it and of course, the ultimate test is, whether or not a reasonable consumer is likely to be confused about who is the company behind that brand and certainly anything regionally is going to be problematic and depending on how it was used, even outside this region there’s that potential for confusions. So, yes, the trademark protects an awful lot of space in this business model.
Damien Allen: Now, if someone is maliciously trying to go after this particular brand, what are the steps to make them stop?
Enrico Schaefer: Well, the steps are, what happens is Keegan and Matt typically get some feedback from someone saying, hey, I love what you did with this and then someone else’s use, and of course, the consumer thinks that it’s Matt and Keegan, so they get notice of it. And then they send it our way, and then, we have different approaches that we employ depending on who it is and whether or not we believe it’s malicious. For a lot of our clients, just leave M22 aside here for a second. For a lot of clients, the first step is a trademark cease and desist, notice and threat letter that says we have the trademark registration for this, you’re infringing the mark and you’re potentially liable for up to $100k and attorney’s fees and statutory damages for infringement, we demand you cease and desist, etc. For Matt and Keegan’s brand, M22, we will sometimes have appropriate circumstances to send that type of letter. In many cases, though, the first step is a trademark cease and desist notice letter saying, hey, you need to understand that we have rights and to provoke a discussion to get them educated and provide them a quick and easy exit so that they can move on. And a lot of times, Matt and Keegan will be involved in those discussions as well with the business owners and we’re able to get people educated and moved on with their life and do a next project relatively quickly. So, it’s worked out very well, thus far. The people really respect the brand, and now, you have to understand, it’s more than just apparel, it’s a store called M22, it’s wine called M22, there is coffee that is M22, what else, Matt and Keegan.
Keegan: Always something.
Enrico Schaefer: Right, so and there’s more coming so there’s an awful lot of protection here because there’s a lot of products and services around the brand.
Keegan: Actually the trademark it did it’s crown too. I mean, we’ve actually encountered people who have literally tried to register a very similar mark and been denied. That’s obvious when that goes through the system that that can’t happen either. I mean, somebody can’t just go do it, it’s been tried and what people also need to understand for us, it’s not a one-hit wonder thing for us. We live here, this is where we grew up, this is, like, we’re here until we have gray hairs and big beards, I mean, we’re here for the long-term with this brand and it’s not going anywhere and we look to do a lot of really cool things with it in the future and that’s why putting so much effort and energy now to protect it and eventually I think everybody will realize that you can’t just go copy it, it’s going to become that, but right now over the first few years, something we just got to protect as hard as we can. But it’s going to be here for a long time. We plan to do a lot of good things with it and we’re going to do whatever it takes to protect it.
Enrico Schaefer: Keegan is right, he raises a good point, which is that the mark has been tested several times at the trademark office and in each and every instance the United States Patent and Trademark Office has sided with us. So, this is not a…there’s nothing particularly novel here, this isn’t on the edge of trademark law. The USPTO stands fully behind this trademark, the registration of this trademark and precluding anyone else from registering anything similar.
Damien Allen: Well, Matt and Keegan. Are you part of the M22 Challenge? Is that something that’s connected with the brand? and what’s going on with that?
Keegan: Yep, that was kind of a new direction we decided to take, you know, are passion has been kiteboarding for the past ten years and M22 is a great spot to do it but kind of limited to the people that participate in that. We really, after getting the brand going, wanted to do something that would bring the whole community together, something that everybody could participate in and that’s how we conceived the idea of the M22 Challenge which is based right in the heart of M22 in Glenn Arbor at the Sleeping Bear Dunes National Lakeshore right in the park. And it’s a multi-discipline event including biking, running and kayaking and stand up paddleboarding and it’s proven to be last year was the first year and it was amazing. We had people from all over the area, people from all over the state come up and enjoy it. This year, it’s going to be even bigger and we were able to…my dad was kind of between jobs too at that time so, he’s a great social guy and we brought him in to help with this event. It’s kind of a family deal for us which has been awesome and we look at this as another thing that the brand is going to be a big part of is the events up here and kind of bringing the community together that’s really what the goal of the company is.
Damien Allen: I also understand that M22 does a lot of charity work and works with the community. What’s some of the charities that you work with?
Keegan: From day one, before we really even launched the brand sold a single t-shirt at a retail store. We sum it up with different concepts for the company and right off the bat, it was a no-brainer for us to bring in the Leelanau Conservancy, which is basically a partner where we’re giving a percentage of all our profits to the Leelanau Conservancy every year and that includes everything we do. That’s actually of gross sales, not of profits, so it’s more but that includes everything we do. The M22 Challenge, the coffee, the wine, what our own stores sell what the distributors sell so, at the end of the day, it’s a lot off the top for a growing business but we just felt that by focusing on one place we felt as the most for the area that we represent was the best thing to do which was the Leelanau Conservancy.
Damien Allen: Well thanking gentlemen for joining us today and discussing protecting brand and protecting your trademark
Matt and Keegan: Thank you, it’s been great. Thanks Damien.
Damien Allen: We’ve been speaking with Matt and Keegan Myers of M22 and Enrico Schaefer of Traverse Legal, PLC on protecting your brand, protecting you trademark today on Trademark Law Radio. My name is Damien, everybody have a great afternoon.
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