Most American lawyers, if asked, would gladly use their legal talents to solve global problems. But unless one has expertise in international law, chances are slim that one will be asked.
That is why those who practice trademark law owe a debt to the Macedonians. For their troubled Balkan land has given birth to a difficult international problem, a problem whose solution can be found only in the intricacies of trademark law. At last, trademark lawyers have a role to play in international diplomacy.
Alexander the Great, King of Macedonia, conquered the known world 2,331 years ago. Since then, Macedonia's history has been less eventful. After World War I, Macedonia was incorporated into the newly established "Kingdom of Serbs, Croats and Slovenes." Like a law firm junior partner, the Macedonians did not rate a mention on the kingdom's letterhead. In 1929, the Kingdom of Serbs, Croats and Slovenes changed its name to the catchier "Kingdom of Yugoslavia." Following World War II, the Macedonian region formed one of six constituent parts of Tito's People's Republic of Yugoslavia.
In 1991, with the fall of communism, the region declared its independence from Yugoslavia, choosing to call itself the "Republic of Macedonia," with Skopje as its capital.
That is when the trademark dispute began.
Unfortunately for the new nation, the name "Macedonia" was already taken. The northern region of Greece consists of three areas or "peripheries," known as East, Central, and West Macedonia. The Greeks were irritated that a new state named Macedonia now bordered three peripheries with the same name. This was more than a matter of fearing that their northern countrymen might misread the road signs on the way home after a night of hard partying and end up in the wrong country. This was a matter of intellectual property theft. Professor Loring Danforth of Bates College, an expert on the crisis, summarized their side:
"From the Greek nationalist perspective, the use of the name 'Macedonian' by the 'Slavs of Skopje' constitutes a 'felony,' an 'act of plagiarism' against the Greek people. By calling themselves 'Macedonians' the Slavs are 'stealing' a Greek name; they are 'embezzling' Greek cultural heritage; they are 'falsifying' Greek history."
In other words, the Macedonians were infringing Greece's trademark.
WHAT TO CALL IT?
The Greeks blocked the new nation's admission to the United Nations and the European Community. The United Nations ultimately admitted the country under the less offensive and more cumbersome title: "The former Yugoslav Republic of Macedonia." Or "the Fyrom," as it became known.
This upset the Macedonians, or, perhaps more precisely, the Fyromians, who feared that reference to "The former Yugoslav Republic" would cause them to be confused with Yugoslavia -- which no longer existed. Whether considered Macedonians or Fyromians, these people did not want to be considered extinct.
The president of the Security Council sought to assuage their concerns by pointing out that the small "f" in "former" proved that the title was merely a "descriptive reference," not a "name." If it were a proper noun, the president maintained, it would be "The Former Yugoslav Republic of Macedonia" with a big "F."
The next crisis was over where to seat "The former Yugoslav Republic of Macedonia" in the General Assembly. Member states are supposed to be seated in alphabetical order. The Greeks objected to allowing them to be seated in the M section, because that would emphasize "Macedonia," which they considered their exclusive trademark. They lobbied to seat them in the F section, for "Former." The Macedonians refused. They reminded everyone that the "f" in "former" was small, not capitalized, and they deserved to sit in a capital letter seat section.
The impasse was finally broken by seating them in the T section next to Thailand, because, "The former Yugoslav Republic of Macedonia" begins with a "t" if one counts "The." The solution pleased no one, not even the Thais, but the T section is where the Macedonians, or Fyromians, sit today.
This month, NATO held its annual summit meeting and planned to induct Albania, Croatia, and "the place that is the subject of this article" into its ranks. As it had threatened, Greece vetoed the place's membership when it came in under the name "Macedonia."
Now all this must seem bewildering to the run-of-the-mill American lawyer who spends his time boning up on secured transactions or ERISA regulations.
But for trademark practitioners, the Macedonian name dispute is right in the proverbial wheelhouse. It fits a common pattern: A business client hunts for the perfect mark to use with his new product. The client falls in love with a name. A trademark search is conducted. It reveals that the mark is already in use. Worse, the prior user is aggressively litigious.
Granted, the prior user in such situations rarely has armed forces. Still, experienced trademark lawyers might suggest a number of possible solutions, all of which could be applicable to an international crisis.
1. Forget that mark and find another.
The safest course is to persuade the client to abandon his favored choice, and adopt a different, safer mark. In this case, the trademark lawyer would advise the Macedonians to forget about "Macedonia."
"It's already taken," he might say, "and you risk war or even a preliminary injunction if you proceed."
He might suggest that his client call their country "Alexander," after their famous progenitor. Of course, that name might be confused with Alexandria, Egypt, or Alexandria, Va., or Alexander Valley, Calif. But none of these are countries, so the risk of confusion is slight.
2. Add a distinguishing modifier, and emphasize it.
If the client insists on keeping the mark, one way to lessen the peril is to add a noninfringing term to the mark, and then to visually emphasize that addition. The Greeks might have used the name first. An obvious way to distinguish the new Balkan state, then, would be:
NEW Macedonia ¿
3. Make "Macedonia" part of a composite mark.
The Macedonians have a distinctive coat of arms, unlike anything the Greeks have. Adding the coat of arms to the name creates a "composite trademark," fostering an entirely different commercial and political impression. In analyzing a mark's strength, or the possibility of infringement, courts view composite marks as a whole, without dissecting them into their separate parts. So it wouldn't matter if the name "Macedonia" were confusingly similar to the Greeks' peripheries. As long as the Macedonians used the coat of arms design with the name, the overall commercial impression would be quite different from the Greeks' Macedonias.
4. Use a disclaimer.
Trademark scholars differ on the efficacy of disclaimers to combat confusion. Some say that disclaimers actually increase confusion, since they mention the very subject the mark is supposed to avoid. The U.S. Court of Appeals for the 9th Circuit takes a "nuanced view," allowing them when they might reasonably make a difference.
The problem with disclaimers in the Balkan crisis is that they would have to be used everywhere the name appears: on their seat at the United Nations; at border crossings; on tourist information; on currency; even on statues of national heroes.
Not affiliated with the Hellenic Republic of Greece
5. Take a license.
If all else fails, the experienced trademark lawyer might advise his client to acknowledge the prior user's seniority, and take a license. In this case, the license would grant Macedonians a nonexclusive right to use the name Macedonia within certain restrictions.
What kind of conditions might Greece impose? The Greek government fears that their northern neighbor harbors irredentist dreams of annexing West, South, and East Macedonia and incorporating them into a formidable Greater Macedonia. So in return for a license to use the name, Greece might logically insist on territorial restrictions, forcing the Macedonians to promise never to invade the Greeks' peripheries.
They might also insist on financial compensation. If any American tourists intent on visiting West Macedonia accidentally cross the border into the Republic of Macedonia, the Macedonians would be obliged to ship them to Greece free of charge. Alternatively, the Macedonians could choose to pay Greece the amount the tourists might have spent in their periphery, and then keep the tourists.
However the international crisis plays out, the Macedonians would do well to take advice from skilled trademark practitioners. With a distinctive, legally secure trademark, a modern business can penetrate global markets, expand sales, and conquer the world.
For Macedonians, it wouldn't be the first time.
Lawrence J. Siskind, of San Francisco's Harvey Siskind, specializes in intellectual property law.