Federal agency battles private firm over trademark

Private-sector brands like Coca-Cola, Kleenex and Tylenol are heavily protected trademarks. Well-paid trademark lawyers armed with scary cease-and-desist orders would descend upon any company that tried to breach those brands.

Now an entrepreneurial, 15-employee acquisition shop in the Interior Department's Minerals Management Service (MMS) is learning that protecting your brand is an important job for any business-even one that's operating deep within the federal bureaucracy.

The brand is called Gov.Works. About a year ago, the MMS acquisition office adopted the name Gov.Works at the urging of Osborn & Barr, a St. Louis advertising firm the shop hired to help market its procurement services to other agencies on a fee-for-service basis. MMS filed a trademark application for the name Gov.Works.

David Sutfin, chief of the MMS procurement operations branch, also recalls obtaining the Internet address "govworks.gov," and asking the staff person in charge of obtaining addresses to buy "govworks.com." The staff person said he couldn't because Gov.Works is a government entity. Worried about brand protection, Sutfin planned to purchase the govworks.com address with his own money, but he forgot to do so.

With the help of Osborn & Barr, the Gov.Works acquisition shop began marketing its procurement services to other agencies in a series of brochures and ads placed in several publications, including Government Executive.

But about six months later, Sutfin got a call from Osborn & Barr informing him that a New York-based start-up Internet company was calling itself govWorks.com. The firm was planning an Internet service aimed at helping federal, state and local governments offer services to citizens over the Web.

Sutfin says he immediately contacted the start-up and informed the company's director of marketing that the Gov.Works name belonged to MMS. A series of meetings between the two groups followed and over the past several months, several options have emerged, according to Sutfin.

1. MMS could sue govWorks.com to prevent the company from using the trademark. MMS has already referred the matter to the Justice Department, but Justice has yet to take any action.
2. GovWorks.com has offered to buy the rights to the trademark from MMS. Sutfin said a price has not yet been discussed, though he wouldn't want to go below $500,000. Since MMS has $110 million in annual revenue now and has invested in building the Gov.Works brand, Sutfin thinks the agency should get even more money from the start-up, particularly if the company foresees a high amount of revenue.
3. Gov.Works and govWorks.com could enter into a partnership in which the two organizations share the name.

The third option is the least appealing to Sutfin.

"I expressed the concern that we do not want to create confusion in the marketplace," Sutfin said.

Officials from govWorks.com were unavailable for comment on Thursday, but in a statement they said govWorks.com and MMS have been working "amicably" on the dispute.

"The discussions have been productive and have focused on the realities of the marketplace, the key being that there is no real-world conflict," the statement said. "We are confident that this will be resolved to the mutual benefit and satisfaction of those involved in the near future."

The government has acted in the past to protect its trademarks. For example, the Forest Service collects payments from private companies for the use of Smokey the Bear's image on their products, and even went to court in 1993 to defend Smokey from a parody produced by an environmental group. (The Forest Service lost the case.)

But the Gov.Works dispute may be the first example of a government agency going head-to-head with a private company over the right to use a government-owned brand name.

"When you start operating in a franchise-fund business, interesting things start happening," Sutfin said.