Nuances of Trademark Protection: Policing, Bullying and Shaming

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by:  John R. Harris

Trademark owners have a responsibility to enforce their trademark rights or lose them. Enforcement of trademark rights is sometimes called “policing” the mark. Trademarks must be actively used and defended, or the rights will evaporate. Registration alone is not enough. The owner of a trademark has to stop people from infringing its marks, even to the extent of going to court if necessary.

An effective trademark policing program allows a company to preserve its rights without resorting to litigation. This is usually accomplished by using a “watch” service to provide alerts for improper or unauthorized use of marks and to monitor for possibly interfering trademark registration applications. The trademark owner then sends complaint letters (such as cease-and-desist letters), and follows up with oppositions or cancellations of a conflicting registration. Sometimes, a court action is necessary – to send a message to the community that the company has a weapon (the trademark) and is not afraid to use it, or to obtain an injunction or damages.

Different companies exhibit different degrees of assertiveness in their policing campaigns. However, policing efforts can go too far. Attempts to stretch an accusation of likelihood of confusion to unrelated goods, or to marks that are really not all that similar, can amount to trademark “bullying.” This is, in essence, a trademark policing program gone rogue. While a trademark owner must be diligent in enforcing its rights, it is not necessarily good for public relations to be perceived as a bully.

A large company’s attempt to stop a small company from using a trademark may be interpreted as “picking on the little guy” and turn into a public relations nightmare. On the other hand, unauthorized or improper use of a mark by third parties of a particular mark may be used against the trademark owner in a legal proceeding to show that confusion is not likely or that rights have been abandoned. The line between legitimate policing and over-the-top bullying is not always easy to find.

Some companies that feel like the victims of trademark bullying have found new ways to fight back. One technique is known as “shaming,” which involves publicly reporting the supposedly over-the-top policing effort on the web and in social media. As recently reported in the Wall Street Journal (Feb. 23, 2012), a number of start ups with limited resources are using shaming tactics to fight back against bigger companies in trademark infringement disputes:

As reported in this article, Phil Michaelson, creator of the website KeepRecipes.com, decided to post a cease-and-desist letter he received from AdKeeper on the website Chillingeffects.org–rather than give up the name of his website and its features. He received offers for help from a number of trademark attorneys.

The technique of “shaming” has come to mean using the web and social networking sites such as Facebook or Twitter to expose what they view as baseless trademark infringement threats or bullying. Entrepreneurs can sometimes gain negotiating leverage or other benefits from the strategy. As reported in the WSJ article, “Trademarks are meant to protect your image, so it doesn’t really help to look like you’re coming down hard on the little guy,” says Chillingeffects.org founder and Yale Law School fellow Wendy Seltzer.

As attractive and inexpensive as shaming may be, the tactic may not achieve the intended result – because the trademark owner is compelled to police or lose the mark. Nonetheless, those who believe they are unjustly subjected to trademark bullying can be expected to make increasing use of social media tools and the web to fight back. It remains to be seen whether shaming tactics will result in any real reduction in bullying, or policing, but it opens up a new front for fighting trademark battles.

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This information is presented for educational purposes and is not intended to constitute legal advice. Opinions expressed are those of the author and not of Morris, Manning & Martin, LLP; see our disclaimer for more information. Contact John Harris for more information at jharris@mmmlaw.com

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