Many
successful companies seeking to aggressively protect their intellectual
property portfolio of valuable brands have been accused of becoming “trademark
bullies.” Their
accusers argue that rather than using a reasoned, measured approach to address
actual commercial threats, these large brand owners deliberately use the specter of
civil litigation to threaten alleged infringers into submission.
Trademark
infringement litigation may be brought either in federal court, or can also be
commenced by opposing or seeking to cancel trademark applications in the United
States Patent and Trademark Office (“USPTO”) in a lengthy and byzantine
administrative proceeding that can last years and cost the parties thousands of
dollars. Because
the cost of litigating trademark disputes can be prohibitive, especially for
smaller companies or individuals, many accused infringers choose to settle or
otherwise resolve their conflict without the merits of the underlying conflict ever
being adjudicated.
Consequently,
commentators -- and sometimes even the brands’ own customer base – have vocally
accused some brand owners of overzealously enforcing their perceived trademark
rights against others in a manner that smacks of bad faith or anticompetitive
conduct used to squelch competition or free speech.
Why would savvy and well-represented companies sometimes risk going too far and potentially alienating their own customer base? While
every case is different, under existing U.S. Intellectual Property law, an
established brand may very well face a Hobson’s
choice: risk the ire of an angry mob, or face ongoing brand
erosion and even extinction in a world of ever-expanding fakes and imitators.
A few examples of alleged "trademark bullying" warrant
mentioning:
- Chick-Fil-A sells more than $4B of sandwiches each year.
The company’s humorous “EAT MOR CHIKIN” trademarked slogan held up by aggrieved cattle (see right), became an instant hit for the company’s efforts at marketing and
promotion. When a small local farmer named Mr. Muller-Moore sought to
federally register the “EAT MORE KALE” slogan in the U.S. Patent and Trademark
Office, the corporation opposed his application on the grounds that
his mark was likely to cause confusion with their slogan.
- Hansen Beverage Company, maker of the popular “MONSTER
ENERGY DRINK” sent Rock Art Brewery a letter demanding that Rock Art cease and
desist its use of “VERMONSTER” as a trademark for beer. Ultimately, after
a public outcry on Twitter, the parties
settled their dispute outside of court, with Rock Art permitted to keep selling
their brew.
- Non-profit Susan G. Komen for the Cure opposes dozens of
trademark applications for wording that includes “FOR A CURE” or “FOR THE
CURE.” When the charity opposed an application for “MUSH FOR THE CURE”
sought by a local non-profit, it became national news.
So what
do each of these four examples have in common? Each circumstance may seem
like an example of brand protection gone awry, and perhaps they are.
However, Difficult Legal
Lines Must Inevitably Be Drawn
It is worth
reminding their critics that if each of these brand owners had not acted to
draw a line in the sand, they would undoubtedly face the prospect of
closer and closer copyists, and eventually encounter even more widespread
infringement. Where any specific line between infringer and innocent
victim is drawn in each case is another matter, but it is clear that a legal
line still must be drawn somewhere, and the clear incentive for brand owners under
current law is to be zealously protective of their investment in their brands.
One legal reason for brand owners to be zealous is that in the event of a brand owner’s
complete failure to act, their targets may be entitled to legally rely on the
affirmative defense that their delay has been inexcusable. This potentially
crippling defense is known as “estoppel by laches” or “laches” for short.
The laches defense is also sometimes described as "estoppel by
acquiescence."
Similar
to an undefined statute of limitations, laches may be available as a defense
when an infringer was actually known about by the Plaintiff, or even should
have been known about under the circumstances, and the delay in bringing suit
was inexcusable.
An
essential element of laches is the requirement that the party invoking the
doctrine has somehow changed its position as a result of the delay. In
other words, the defendant is now in a worse position than at the time the
claim should have been brought. For example, the delay in asserting the
claim may have caused the defendant to open up more stores, hire more employees
and build up its own reputation in reliance on the brand owner’s unfair
inaction.
Even
worse yet, if a brand owner fails to act against numerous infringers in the
marketplace, it may very well face the dire prospect of losing its trademark
altogether under a doctrine known as “genericide.”
Some
words that started out as brand names and “killed” by such widespread genericide
are: aspirin, bundt cake, cellophane, dry ice, escalator,
granola,
kerosene, linoleum, minibike, nylon,
pogostick, tarmac, thermos, touch-tone,
trampoline,
yo-yo and zipper.
In each
of these cases, the brand owner failed to act to sufficiently police the
marketplace to stop widespread third-party unauthorized uses. Ultimately,
these erstwhile brands passed into the netherworld of “dead” trademarks, devoid
of legal protection altogether.
But Are These Extreme Historical Examples of Genericide that Can’t Recur Today?
Harris
Interactive released a list of products
ranked by brand equity, a measure of the brand's popularity with
U.S. consumers. Among the top 10 are Ziploc food bags, Hershey’s Milk
Chocolate Candy Bars, Kleenex Facial Tissues, Clorox Bleach, WD-40 Spray
Lubricant, Heinz Ketchup, Windex Glass Cleaner and Campbell’s Soups. In
other words, some of the most valuable and well-known trademarks in the world.
It is
clear from this list alone that success in today's marketplace can be a
double-edged sword. The companies who manufacture these products have
done an incredible job in advertising and marketing them, so successful in some
cases that the brand name is in danger of becoming a genericized
trademark. If the companies on this list aren't zealous, they
could end up losing the trademark for the products that they have worked so
hard to market successfully.
Ultimately,
trademark law is intended to protect consumers and companies from confusion
with established brands. Quality control and brand reputation are
crucial in today's marketplace, and zealous trademark protections are a perfectly logical and legal way
to protect customers from fraud, and to give companies the tools they need to
protect their valuable investment. In conclusion, in this age of rampant counterfeiting and infringement, it is important to fully understand why in their zeal to protect their valuable brands, aggressive tactics can seem like a viable option for brand owners, even if sometimes they risk going too far.
