They can go to the moon, but not the trademark office.
That seems to be Space Force’s motto, the newest unit of the U.S. armed forces, which has become the posterchild for a common business mistake—announcing a brand before securing its intellectual property rights.
This is a vital step that organizations all too often overlook. It’s essential to lock down all relevant trademarks for potential commerce prior to publicizing a new product or brand; otherwise organizations risk embarrassment, costly legal battles, and potentially even abandoning the name altogether.
In the case of Space Force, we saw a move that seemed to tempt parody—and sure enough led to a Netflix comedy series—after the president touted plans in June 2018 for a sixth branch of the U.S. military dedicated to protecting the country’s space interests.
Government Has Not Secured Rights
Now, half a year removed from Congress approving legislation to establish the new militia, the U.S. government still has not secured trademark rights for “Space Force.” It currently has a pending intent-to-use trademark application (competing with several other applications for “Space Force,” including some that date back to March 2018).
Even more embarrassing, Netflix has already locked up trademark rights to “Space Force” in Europe, Australia, and Mexico, among other countries.
Under U.S. law, organizations are able to secure trademarks on a “first-to-use” basis, meaning the first entity to engage in commerce for particular goods and services has a priority to that trademark, even if it’s not the first entity to file for it. Many other countries use a “first-to-file” system, meaning organizations lock down trademarks by submitting the first application.
Lack of IP Rights Will Limit Control
Obviously, the U.S. Space Force can function fine without a trademark—day-to-day satellite intelligence analysis and other Space Force functions won’t be impacted—but lack of intellectual property rights will limit the U.S. military’s control over the name in the marketplace and over what Space Force-branded merchandise can be sold.
For example, the U.S. government listed a variety of products on its trademark application filed in May—including key chains, jewelry, bedspreads, towels, cigarette lighters, and toy cars—but those items were already listed by a private entity in a filing two years earlier.
The point is not that the U.S. won’t be able to outmuscle a trademark troll trying to horn in on the Space Force brand. The question is: At what cost? How many hours and resources will go towards defending a name that could have been secured on the front end? Dashing ahead with a clever idea before getting all your business ducks in a row only leads to lost time, frustration, and financial pain.
Though the U.S. is a “first-to-use” country, it’s extremely helpful to be the first to file a trademark application. That puts in place what’s called a “rebuttable presumption,” where the trademark office assumes the initial filer came up with the trademark and any entity who tries to oppose the initial filer’s rights must prove they used it first commercially. That’s not an easy task.
When you have deep pockets like the U.S. government, victory may be a foregone conclusion, but it’s an uphill battle, a potentially years-long litigation process with plenty of costs and headaches.
Additionally, just because the U.S. is a first-to-use trademark country, that doesn’t mean you can delay securing your trademark indefinitely. It’s critical to oppose another entity’s trademark on your brand as soon as you learn of it, and after five years, canceling that trademark becomes more difficult.
There’s also a public embarrassment factor. Making a major announcement to much fanfare only to become embroiled in lawsuits trying to secure trademark rights can lead to accusations of disfunction and incompetence. It’s a glaring oversight and a potential PR debacle.
Bad press follows when a government or company looks foolish—Space Force is a gift that keeps on giving for critics of the Trump administration—but the real problem is the legal issue. It has concrete and immediate financial consequences that won’t go away in a few days or be smoothed over with clever public messaging.
In short, a properly executed intellectual property strategy should be like a sound system at a concert—highly effective, enjoyed by everyone, but completely unnoticed and unremarked upon. It’s vital organizations engage in clear-eyed planning to protect their business goals without incident, providing a firm foundation that safeguards and strengthens their brands for the long term.
This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.
Sam P. Israel is an art and intellectual property attorney based in Manhattan, where he leads the boutique firm Sam P. Israel P.C.