It is time for a new look at trademark bullying. In recent months, trademark bullying has captured the attention of the trademark bar and the national media. The Wall Street Journal has written about it, the International Trademark Association has sponsored programs and articles to address it, and the United States Patent and Trademark Office has even reported to Congress about it. This increased attention is not because the actions of brand owners have changed – cease and desist letters have been around for decades. Instead, it is the actions of “accused infringers” that have taken center stage as they have taken their cases to the court of public opinion. In many cases, brand holders who thought they were enhancing their brands by enforcing them, have found that unwanted attention to their enforcement efforts can actually damage the public’s perception of their brand. As a result, trademark owners need to develop a new approach to brand building and trademark enforcement.
New Responses to Trademark Bullying Can Damage Your Brand
Regardless of the cause of trademark bullying, it has become newsworthy mostly because of the creative responses developed by the accused infringers. In the past, an accused infringer was often limited to either complying with the cease and desist demands or negotiating a coexistence agreement with the trademark owner. In either case, the accused infringer was usually forced to agree to some sort of limitations in order to avoid an expensive lawsuit. More recently, however, the availability of social media and other Internet resources have expanded the menu of available responses. Accused infringers can now use crowd funding sites to raise money for legal fees to resist questionable legal claims of trademark owners or simply make the cease and desist letter public in an effort to embarrass the trademark owner by labeling them as a trademark bully. When these types of responses spread rapidly via social media, the damage to a trademark owner’s brand can be greater than the original conduct of the accused infringer.
Some of the most creative responses are now well known. The seller of “Eat More Kale” shirts launched a social media public relations campaign against Chick-fil-A after it asserted its “Eat Mor Chikin” brand against him. Later, the accused infringer used crowd funding sites to raise money for his legal battle. In another example, after Louis Vuitton challenged the University of Pennsylvania Law School’s use of the famous LV pattern (in which the LV was replaced by a TM in a clever poster for a symposium addressing trademarks in the fashion industry), the students invited Louis Vuitton’s counsel to their symposium and posted both the cease and desist letter and their response online.
Due in large part to the success and popularity of these social media campaigns, the strategies are being copied by other accused infringers. As recently as December 2013, the owner of the Missouri bar Exit Six, who was selling “Frappicino” beer and received a standard cease and desist letter from Starbucks, posted his response letter online along with an image of the check for $6 that he included for any tongue in cheek “damages” to Starbucks.
Be A Leader, Not A Bully
Now that accused infringers have become more sophisticated and creative when responding to cease and desist letters, it is time for trademark owners and their attorneys to change their approach. Instead of asking “can I enforce my mark against the accused infringer,” the trademark owner needs to ask whether he should be enforcing the mark. Instead of looking for any basis to support a cease and desist letter, trademark attorneys should be asking their clients what type of brand they are trying to build and determining whether offensive action is helping to protect a brand or if such action may ultimately damage the brand. While it may be easier to tell an accused infringer to stop, using creative energy to build something new will always be more fruitful in the long term.
Trademark owners and their lawyers must keep in mind that if they are not actively developing their own brand, a brand is already being assigned to your work by others. In fact, this is the very reason why every trademark owner spends time, energy, and resources to market their trademarks and define their brand. Trademark owners cannot afford to allow their trademark enforcement efforts to backfire. They cannot afford to have a single cease and desist letter made public in a way that undermines their branding efforts. They cannot afford to allow their trademark to be controlled by others. Therefore, trademark attorneys need to work with brand holders to be ready for situations that arise unexpectedly and require immediate action.
Develop A Story and Development Plan For Your Brand
Before even thinking about potential infringers and cease and desist letters, trademark attorneys need to talk with their clients about what their brands represent and how they want their brand to grow. Every brand conveys an emotional message to consumers and a brand promise. Every brand is associated with certain goods or services, and every business has a plan to build and expand the brand. Many companies have detailed brand guidelines that provide a written account of these messages and plans. For companies that do not have such guidelines, trademark attorneys have an obligation to understand these plans before sending out a cease and desist letter.
Brand owners are very unlikely to become a trademark bully if they understand what trademarks they own and how they want their businesses and brands to grow. In fact, if expansion plans are clearly developed, a brand owner will be much less likely to try to enforce a trademark against someone using a mark in an unrelated area. Sometimes, it may be necessary to conduct a trademark audit to help a trademark owner understand what trademark rights they have, what brand message is being developed, and how they can expand on those rights. Trademark attorneys need to review the brand owners’ trademark registrations, products and services, packaging, web site, and advertisements, as well as any other marketing or promotional materials. Based on this review, a qualified trademark attorney can confirm which trademarks are being used properly and identify additional trademark rights that may exist or could be created or exploited.
Keep Up With Changes
As a company grows and expands, it often extends the use of its primary brands to goods and services that were not anticipated by prior trademark registrations. McDonald’s Corporation, for instance, currently uses the MCDONALD’S trademark for a great deal more than the “drive-in restaurant services” described in its 1963 United States trademark registration (Reg. No. 743,572). In order to avoid becoming a bully, a company’s trademark portfolio needs to grow consistently with the company’s business. Staying abreast of these changing and expanding trademark rights will allow the trademark owner to protect and enforce those rights in a consistent manner. Moreover, having a clear understanding of the trademark rights and how the business intends to grow will help keep the legal team from overreaching with its enforcement efforts.
How to Enforce Trademarks Without Bullying
Once the brand owners understand their brands – what they have and where they want to go – then it will be possible to move beyond the traditional enforcements that often lead to the label of a “trademark bully.” Instead, trademark attorneys can help trademark owners develop a comprehensive enforcement system. The enforcement plan can include basic elements such as watch services for primary brands in key countries, investigation of potential infringers, and traditional enforcement methods such as cease and desist letters, oppositions, cancellations, and litigation as well as a periodic analysis of potential false advertising claims and consideration of whether U.S. Customs officials should be made aware of the potential for the importation of counterfeit goods. An enforcement plan can even anticipate situations when the trademark owner should not enforce trademark rights. For example, some brand owners may choose not to enforce rights against fan sites or other events involving children.
At the end of the day, even if a brand owner has sophisticated brand guidelines with development plans and enforcement systems, it is sometimes necessary to aggressively take on a genuine infringer. After all, the strongest brands are those that are used exclusively by one source, and there can be only one McDonalds, Apple, and Coca-Cola. In these situations, bullying can still be avoided.
When the time does come where some sort of enforcement action is necessary, a good rule of thumb for future brand owner and attorney decision-making comes straight from my grandmother – “Don’t put anything in writing that you wouldn’t like to see on the cover of the New York Times.” Similarly, don’t send a cease and desist letter that you would be embarrassed to see being shared virally on Facebook, Twitter, or Instagram. In situations where a trademark owner is faced with clear infringement and would not hesitate to file a complaint, a firmly worded cease and desist letter will be recognized as thoughtful trademark enforcement, not bullying. Need proof? Look no further than Jack Daniel’s recent demand letter sent to a book author who used a knock off of the Jack Daniel’s label on the book cover. It was hailed as the “the most polite, encouraging, and empathetic cease-and-desist letter ever to be sent.”
When faced with situations where trademark infringement is less clear, trademark owners should consider other alternatives. For example, pick up the phone. A simple call between the trademark owner and the suspected infringer is a tool that has been used for generations and is often the quickest path to a resolution. Another traditional alternative to a cease and desist letter is to send a letter that either includes an offer to license the trademark (and thereby become part of the trademark owner’s team instead of an opponent) or simply explains the position of the trademark owner, asks about how the third party intends to use the mark, and invites the third party to discuss possible amicable resolutions.
Remember, when a trademark owner takes the time to understand their brand, it will be easier to enforce that brand in a manner that is consistent with their goals. It is up to trademark attorneys and brand owners to change the conversation. Then, any enforcement efforts will be recognized as part of brand building, not bullying.
© 2014 McDonnell Boehnen Hulbert & Berghoff LLP
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 (Megan Garber, “This Cease-and-Desist Letter Should Be the Model for Every Cease-and-Desist Letter,” The Atlantic, (Jul. 23, 2012)).