Independents

The PR Adviser: Dear Lilian …

IndependentsSep 19, 2017

The PR Adviser: Dear Lilian …

Lilian Raji helps facilitate a conversation on how brands can determine if someone is violating their trademark and whether legal action is warranted.

Lilian Raji is a strategic marketing and public relations adviser who helps luxury lifestyle brands sell more products to luxury buyers.

Hello, my dear readers! It feels like forever since we last got together, no?

When we previously connected, some of us were curled up in a ball, nursing paper-cut wounds from pages of pre-Las Vegas paperwork; others were doing shots of Four Loko to stay awake through pre-Vegas prep; all were eager for a magnificent Vegas jewelry week.

So how was Vegas for you? Tell me!

Personally, I experienced thrilling and thought-provoking conversations. I saw gems of kingly opulence and subdued elegance. My body was exhausted when I left Vegas, but my mind was invigorated, renewed with profound love for our craft and an immense appreciation for the love each of you express in your work ... which brings us back to this column.

As I navigated the floors of Couture and JCK, I heard firsthand your challenges with marketing and promoting yourself in this industry. This column has always existed to help you with just that, and I’m honored by all of you who welcomed me into your booths and shared your stories.

For the next few months, this column will be about your challenges. The stories will remain mostly anonymous, sharing only names for those who would benefit from being highlighted. Everyone else: Your secret is safe with me.

If I didn’t meet you in Vegas, you are always welcome to email me your pressing PR questions, and I will address them in a future column.

Now, let’s begin!

------

Dear Lilian,

My brand has been around for almost two decades, and in all of that time, I’ve used the same tagline. Recently, a very well-known fashion brand has begun using my tagline in their recent campaign. What can I do?

Signed,
Imitation IS NOT the Sincerest Form of Flattery

My dear Imitation,

It’s a shame when titans of industry flaunt their army of lawyers to keep smaller brands intimidated. But good news for you: Your particular Goliath has faced a David in the past--and lost! Given how much I’ve loved your work since we first met at Couture in 2009, I’m happy to offer you some rocks to throw.

Although my youthful ambitions were towards becoming a lawyer, alas, my life took a different path--one that’s brought me here to point you in the right direction for finding justice.

That direction is to attorney and recent JA New York Show panelist Joy Butler. This is what she had to
say when I told her what’s going on: “Her issue is a trademark or unfair competition issue, not a copyright issue. Briefly, copyright law protects original creative material such as books, films, visual art and even magazine columns. Trademark law protects one’s exclusive use of an identifier (e.g., branding) for the source of a specific product or service. The trademark-protected identifier can be a word, phrase, design, shape, color and, yes, a tagline.”

To determine whether someone’s use of a similar or identical trademark violates your trademark and whether legal action is warranted, consider the following.

1. Are you actually using your “identifier” in a manner that qualifies for trademark protection? This requires using the trademark in commerce, in connection with offering for sale the business’s goods or service. It’s not sufficient to use the company name, logo, or tagline on company letterhead or business cards.

The aforementioned must also appear on the product or the product’s packaging. If the trademark is used with a service, the trademark must appear with advertising for the service.

2. If you have trademark rights, have they actually been infringed? Just because a business owner has trademark rights, those rights do not absolutely prohibit anyone else from using the same name, logo or tagline.

You can prevent others from using your trademarks only if the other use is confusing. Your exact trademark can be used on substantially different products or in a substantially different industry. That’s why Delta Airlines can co-exist with Delta Faucets and Subaru Outback vehicles can co-exist with Outback Steakhouse.

3. Have you registered your trademark? Registration is not a pre-requisite for valid trademark rights; you instantly develop trademark rights by being the first to use the trademark in commerce in a particular geographic region.

Nevertheless, federal registration of the trademark with the U.S. Trademark Office does provide you with a number of additional benefits, including nationwide exclusivity, increased powers to enforce your trademark rights and eligibility to receive higher damage awards from the infringer with a successful trademark infringement lawsuit.

Without existing already as your attorney, dear designer, Joy isn’t able to make a definitive recommendation. She did add, however, that if your answer is yes to all three questions, you can potentially halt the Goliath’s actions with a cease-and-desist letter, and, of course, by filing a lawsuit.

Check out Joy’s book, “The Cyber Citizen’s Guide Through the Legal Jungle: Internet Law for Your Professional Online Presence,” which includes guidelines for determining your trademark rights and fully annotated examples of completed trademark registration applications.

Keep me posted on your fight. I want to toast with you when you win!

Until next time, faithful readers!

Lilian Raji is a strategic marketing and public relations adviser who helps luxury lifestyle brands sell more products to luxury buyers. Send questions for The PR Adviser to nationaljeweler@lmrpr.com or contact her at lilian@lmrpr.com. Follow her on Facebook, Twitter, Instagram and Pinterest.
Lilian Rajiis a strategic communications and PR adviser who helps companies understand their marketing problems, then designs and executes strategies to solve them.

The Latest

AuctionsSep 27, 2022
In Betty White’s Blockbuster Estate Sale, Jewelry Held Its Own

Fine jewelry comprised three of the auction’s top 10 lots, though it could not top her director’s chair or scripts from “The Golden Girls.”

CrimeSep 27, 2022
3 Suspects in Beverly Hills Smash-and-Grab Robbery Arrested

A total of four suspects are now in custody with police still on the lookout for the remaining two.

ColumnistsSep 27, 2022
Creative Connecting: Fun Ideas for Holiday 2022 In-Store Events

From a “whodunnit” murder mystery to a permanent jewelry party, Duvall O’Steen and Jen Cullen Williams share a wealth of suggestions.

Brought to you by
6 Steps to Start a Dynamic Company Culture

Learn how to better serve your employees, customers and community by having a dynamic and supportive company culture.

MajorsSep 27, 2022
Stuller Releases 2 Updated Catalogs Ahead of the Holiday Season

“Mountings 2023-2024” and “Diamonds & Gemstones 2023-2024” offer a vast selection of options to create custom pieces.

Weekly QuizSep 22, 2022
This Week’s Quiz
Test your knowledge of the latest jewelry news with this quick test.
Take the Quiz
Events & AwardsSep 27, 2022
ICA’s 2023 Congress Will Be Held in Dubai

The event will be hosted by the Dubai Multi Commodities Centre from Feb. 15-17.

CollectionsSep 26, 2022
Go ‘Inside the Dream’ of Bulgari Via a New Documentary on Amazon Prime

It follows Creative Director Lucia Silvestri as she crafts the brand’s high jewelry collections.

Brought to you by
Committing to an Ethical Diamond Business

While ethical mining is essential to a diamond business, they represent only a fraction of the responsibility bestowed on jewelers.

Recorded WebinarsSep 26, 2022
Watch: What Jewelers Should Know About Insurance

From safeguarding showcases to appraisal liability, insurance experts Mark Devereaux and Andrew Chipman share insurance tips for jewelers.

TrendsSep 26, 2022
Vahan Collabs With Wolf on a Jewelry Box

It’s the first time in 50 years the brand has made something other than jewelry.

Events & AwardsSep 26, 2022
Texas Jewelers Association Rolls Out New Format for Design Competition

The competition takes place in tandem with TJA’s annual convention, known as the Texas Jewelers Roundup.

CollectionsSep 23, 2022
Pandora Reimagines Keith Haring’s Art in New Collection

The limited-run collection features figures from Haring’s iconic street art on charms, bracelets, rings, and more.

GradingSep 23, 2022
GIA Career Fair Returns to Carlsbad

The Gemological Institute of America also announced plans for events in New York and London in 2023.

SourcingSep 23, 2022
See the Items in Gem Legacy’s 4th Anniversary Benefit Auction

One hundred percent of proceeds will benefit the nonprofit’s silicosis prevention initiative.

CollectionsSep 23, 2022
Piece of the Week: Emily Weld Collins’ Amulet

Inspired by antique coins, it depicts a “hippocamp” from Greek mythology.

EditorsSep 22, 2022
4 Things Seen and Heard at the 2022 HardRock Summit

Gemstones Editor Brecken Branstrator dishes on the latest color to trend, the show floor buzz, and more from Denver.

TrendsSep 22, 2022
There’s a New Book on Tiffany & Co.

Written by historian Vivienne Becker, it accompanies this summer’s Tiffany jewelry exhibition at London’s Saatchi Gallery.

Supplier BulletinSep 22, 2022
Using Commerce Data to Outshine the Competition in the Jewelry Industry

Sponsored by Bloomreach

SourcingSep 22, 2022
First Diamond Recovered From Burgundy’s Ellendale Restart

Burgundy also announced the retail launch of its diamond brand, Maison Mazerea.

Events & AwardsSep 22, 2022
JCK Industry Fund Now Accepting Applications

Organizations with a project or initiative aimed at bettering the jewelry industry are encouraged to apply.

Lab-GrownSep 21, 2022
An Updated Look at the Lab-Grown Diamond Market: Size, Pricing, and More

As the end of 2022 draws near, National Jeweler offers another deep dive into lab-grown diamond market data.

TrendsSep 21, 2022
These Are the Diamond Jewels to Stock for the Holidays

These trending-yet-timeless pieces are no-brainers for customers in search of the perfect gift.

SourcingSep 21, 2022
A Day in the Life: Daniel Namdar, Fancy Color Diamond Specialist

Namdar joins a long line of diamond experts, but his love of the trade was learned rather than inherited.

Lab-GrownSep 21, 2022
Looking Ahead: 4 Factors That Could Shape Lab-Grown Diamonds’ Future

Growing supply and falling prices likely will make differentiation a necessity and a reality, according to analyst Paul Zimnisky.

AuctionsSep 21, 2022
Egyptomania at Sotheby’s: See the Egyptian Revival Jewels Heading to Auction

The auction house is celebrating 100 years since the discovery of King Tut’s tomb.

MajorsSep 21, 2022
Claire’s Expands Walmart Partnership

The chain’s jewelry and accessories are now available in 2,500 Walmart locations.

Events & AwardsSep 21, 2022
Ethical Gem Fair Heads to NYC for the First Time

The event is slated for Oct. 20-22 at Brooklyn Metal Works.

×

This site uses cookies to give you the best online experience. By continuing to use & browse this site, we assume you agree to our Privacy Policy