Thursday, June 27, 2013

Bullying the Trademark Bully

Engaging in what is perceived as “trademark bullying” has caused nationwide attention. The media has reported countless stories about trademark owners engaging in tactics, such as sending cease-and-desist letters or engaging in litigation, that have been deemed frivolous and beyond the scope of their actual trademark rights. The U.S. Patent & Trademark Office defines trademark bullying as using litigation tactics that involve “an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.” Examples of trademark bullying in recent headlines include New York State’s Department of Economic Development (owner of the “I ♥ NY®” trademark) sending a cease-and-desist letter to a coffee shop for using the I [coffee cup] N Y” logo and Chick-fil-A going after a Vermont folk artist for selling t-shirts that say “eat more kale”. 

Though these tactics are occurring, consumers are now empowered more than ever before to fight back by utilizing the magic of social media. Aggressive cease-and-desist letters are being met by resistance on blogs, Facebook, and Twitter that can lead to a public shaming. Ferrero, the owner of Nutella, has went after the founder of World Nutella Day, but had to withdraw its complaint after word spread virally that “Nutella Thanks Its Biggest Fan, Founder of World Nutella Day, by Sending Her a Cease and Desist That’s nuts!” Magic Hat has met resistance on Facebook and received negative publicity for going after West Sixth Brewing Co. because they were using an alleged confusingly similar an orange label that includes the numeral 6 and a "dingbat" star. This phenomenon of social media resistance has caught the eye of intellectual property experts who at the Corporate Counsel’s 25th Annual General Counsel Conference, advised corporations to be cautious when enforcing their marks by implementing a case-by-case basis approach rather than a one-size-fits all approach to trademark enforcement.

Trademark enforcement is a very important part of protecting ones trademark portfolio. However, in the age of social media where any story can go viral, trademark owners must be aware and consider the consequences of being labeled a trademark bully in the court of public opinion.

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