Winter 2014 Vol. 12, Issue 1 A review of developments in Intellectual Property Law Build Your Brand Without Bullying By James M. McCarthy New Responses be greater than the original conduct of the It is time for a new look accused infringer. at trademark bullying. In to Trademark Bullying Some of the most creative responses are recent months, trademark Can Damage Your Brand now well known. The seller of “Eat More Kale” bullying has captured the shirts launched a social media public relations attention of the trademark Regardless of the cause of trademark bullying, campaign against Chick-fil-A after it asserted bar and the national it has become newsworthy mostly because its “Eat Mor Chikin” brand against him. Later, media. The Wall Street of the creative responses developed by the the accused infringer used crowd funding sites Journal has written about accused infringers. In the past, an accused to raise money for his legal battle. In another it, the International Trademark Association has infringer was often limited to either complying example, after Louis Vuitton challenged the sponsored programs and articles to address it, with the cease and desist demands or University of Pennsylvania Law School’s use and the United States Patent and Trademark negotiating a coexistence agreement with of the famous LV pattern (in which the LV Office has even reported to Congress about the trademark owner. In either case, the was replaced by a TM in a clever poster for it. This increased attention is not because accused infringer was usually forced to agree a symposium addressing trademarks in the the actions of brand owners have changed— to some sort of limitations in order to avoid an fashion industry), the students invited Louis cease and desist letters have been around for expensive lawsuit. More recently, however, Vuitton’s counsel to their symposium and decades. Instead, it is the actions of “accused the availability of social media and other posted both the cease and desist letter and infringers” that have taken center stage as they Internet resources have expanded the menu their response online. have taken their cases to the court of public of available responses. Accused infringers can Due in large part to the success and opinion. In many cases, brand holders who now use crowd funding sites to raise money popularity of these social media campaigns, thought they were enhancing their brands by for legal fees to resist questionable legal the strategies are being copied by other enforcing them, have found that unwanted claims of trademark owners or simply make accused infringers. As recently as December attention to their enforcement efforts can the cease and desist letter public in an effort 2013, the owner of the Missouri bar Exit Six, actually damage the public’s perception of their to embarrass the trademark owner by labeling who was selling “Frappicino” beer and received brand. As a result, trademark owners need to them as a trademark bully. When these types a standard cease and desist letter from develop a new approach to brand building and of responses spread rapidly via social media, Starbucks, posted his response letter online trademark enforcement. the damage to a trademark owner’s brand can (continued on page 2) Page 4 Page 6 “Patent Trolls” Beware— Experience with the Congress Tackles USPTO’s First Action Vexatious Patent Litigation Interview Program Page 8 Page 10 Evolving Data Protection The Blurred Lines of Regimes in the Copyright Infringement Asia-Pacific Arena of Music (continued from page 1) these messages and plans. For companies described in its 1963 United States trademark along with an image of the check for $6 that that do not have such guidelines, trademark registration (Reg. No. 743,572). In order he included for any tongue in cheek “damages” attorneys have an obligation to understand to avoid becoming a bully, a company’s to Starbucks. these plans before sending out a cease and trademark portfolio needs to grow consistently desist letter. with the company’s business. Staying Be A Leader, Not A Bully Brand owners are very unlikely to become abreast of these changing and expanding a trademark bully if they understand what trademark rights will allow the trademark Now that accused infringers have become more trademarks they own and how they want their owner to protect and enforce those rights in a sophisticated and creative when responding to businesses and brands to grow. In fact, if consistent manner. Moreover, having a clear cease and desist letters, it is time for trademark expansion plans are clearly developed, a brand understanding of the trademark rights and owners and their attorneys to change their owner will be much less likely to try to enforce how the business intends to grow will help approach. Instead of asking “can I enforce a trademark against someone using a mark keep the legal team from overreaching with its my mark against the accused infringer,” the in an unrelated area. Sometimes, it may be enforcement efforts. trademark owner needs to ask whether he necessary to conduct a trademark audit to help should be enforcing the mark. Instead of a trademark owner understand what trademark looking for any basis to support a cease and How To Enforce Trademarks rights they have, what brand message is being desist letter, trademark attorneys should be developed, and how they can expand on those Without Bullying asking their clients what type of brand they rights. Trademark attorneys need to review Once the brand owners understand their are trying to build and determining whether the brand owners’ trademark registrations, brands—what they have and where they want offensive action is helping to protect a brand products and services, packaging, web site, to go—then it will be possible to move beyond or if such action may ultimately damage the and advertisements, as well as any other the traditional enforcements that often lead brand. While it may be easier to tell an accused to the label of a “trademark bully.” Instead, infringer to stop, using creative energy to build trademark attorneys can help trademark something new will always be more fruitful in owners develop a comprehensive enforcement the long term. Once the brand owners system. The enforcement plan can include Trademark owners and their lawyers understand their basic elements such as watch services for must keep in mind that if they are not actively primary brands in key countries, investigation developing their own brand, a brand is already brands—what they of potential infringers, and traditional being assigned to your work by others. In fact, have and where they enforcement methods such as cease and desist this is the very reason why every trademark letters, oppositions, cancellations, and litigation owner spends time, energy, and resources to want to go—then it will as well as a periodic analysis of potential market their trademarks and define their brand. be possible to move false advertising claims and consideration of Trademark owners cannot afford to allow their whether U.S. Customs officials should be made trademark enforcement efforts to backfire. They beyond the traditional aware of the potential for the importation of cannot afford to have a single cease and desist enforcements that often counterfeit goods. An enforcement plan can letter made public in a way that undermines even anticipate situations when the trademark their branding efforts. They cannot afford lead to the label of a owner should not enforce trademark rights. to allow their trademark to be controlled by “trademark bully.” For example, some brand owners may choose others. Therefore, trademark attorneys need not to enforce rights against fan sites or other to work with brand holders to be ready for events involving children. situations that arise unexpectedly and require At the end of the day, even if a brand immediate action. marketing or promotional materials. Based owner has sophisticated brand guidelines on this review, a qualified trademark attorney with development plans and enforcement Develop A Story and Development can confirm which trademarks are being used systems, it is sometimes necessary to properly and identify additional trademark Plan For Your Brand aggressively take on a genuine infringer. rights that may exist or could be created Before even thinking about potential infringers After all, the strongest brands are those that or exploited. and cease and desist letters, trademark are used exclusively by one source, and there attorneys need to talk with their clients about can be only one McDonalds, Apple, and what their brands represent and how they Keep Up With Changes Coca-Cola. In these situations, bullying can want their brand to grow. Every brand conveys As a company grows and expands, it often still be avoided. an emotional message to consumers and extends the use of its primary brands to goods When the time does come where some a brand promise. Every brand is associated and services that were not anticipated by sort of enforcement action is necessary, a with certain goods or services, and every prior trademark registrations. McDonald’s good rule of thumb for future brand owner business has a plan to build and expand the Corporation, for instance, currently uses the and attorney decision-making comes straight brand. Many companies have detailed brand MCDONALD’S trademark for a great deal from my grandmother—“Don’t put anything guidelines that provide a written account of more than the “drive-in restaurant services” in writing that you wouldn’t like to see on 2 Winter 2014 Vol. 12, Issue 1 the cover of the New York Times.” Similarly, owners should consider other alternatives. easier to enforce that brand in a manner that is don’t send a cease and desist letter that you For example, pick up the phone.