Beyond the Hammer: Thoughtful Approaches to Trademark Infringement
By: Donna Ray Berkelhammer. This was posted Thursday, March 15th, 2012
Obtaining a federal or state trademark is merely the first step in protecting your brand and reputation. If you don’t actively root out and address infringement, you could be abandoning your mark. Many people equate “policing” a trademark with sending stern cease and desist letters.
A knee-jerk cease and desist letter, however, can subject the brand owner to scorn, ridicule or can make a previously little-known criticism site go viral. The most recent case of this in the media is Chick-Fil-A‘s claim that “Eat More Kale” infringes its “Eat mor chikin” slogan. Even the NFL is not immune from claims that it overzealous in protecting its intellectual property rights.
A better and more balanced approach was used by Vibram USA, in trying to stamp out counterfeit “Five Fingers” running shoes, as documented recently in Inc. Magazine. To me, this approach uses common sense, a firm understanding of market niche, and engages its customers. A customized, thoughtful approach is better than a one-size-fits-all hammer approach.
Cease and desist letters are now posted online and the senders tagged as trademark bullies. It is more important than ever to coordinate response to potential infringement with your marketing and legal teams. Here’s a starting checklist of topics to consider before firing off that cease and desist letter:
- How strong is my mark?
- Am I clear that my use of the mark has priority?
- What is the context (parody, competitor, social commentary)?
- Who is the infringer (artist using my product, fan, customer, child, unrelated organization, noncompetitive site using a wordplay on my name)?
- Who has the most to lose and the biggest war chest?
- Is there another way to protect my mark?
- Social media changes fights over trademarks (usatoday.com)
- In annual tradition, advertisers cowed by NFL trademark bullying (arstechnica.com)
- Fashion Law Group at Penn Law receives Cease-and-Desist letter from LOUIS VUITTON! (haute-law.com)
- Responding to a Cease and Desist Letter: The Gentle Way (tacticalip.com)