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News & commentary on intellectual property issues.
May202010 | Steve O'Donnell
Is there a better way to police a trademark?
Recently I posted about Chick-Fil-A’s actions against someone using the mark “Eat More Produce.” Phoenix Patent Attorney commented on that post and brought up another recent instance about Monster (the energy drink) going after Vermonster beer for a similar alleged infringement and mentioned how certain of these cease and desist letters find their own life on social media. . . which got me thinking, should attorneys rethink their strategy in cases like this because of social media?
Both Chick-Fil-A and Monster have suffered some negative publicity blowback due to their actions because many people view their actions as the big guy going after the little guy for an alleged infringement that is, really, pretty minor.
This brings up an interesting quandary: the trademark owner has to police their mark or they risk losing it, but there can be public opinion fallout if they police their mark against much smaller entities. . . is there a way to police without looking like a jerk?
I think there is. If the alleged infringement is borderline, where it touches upon someone else’s trademark, but doesn’t quite stomp on it, maybe trademark lawyers should take a different approach.
If we assume that most of these issues will eventually be resolved with an agreement reached after a few iterations of correspondence, why not just cut to the chase? Instead of the trademark owner firing off a standard cease and desist letter, what if they sent a letter pointing out what they think is the proper legal standard, but instead of making a demand, offered a reasonable settlement conditioned on the recipient not taking it to the press?
If Chick-Fil-A knows that they’d be satisfied with the “Eat More Produce” company agreeing to stay out of the relevant markets, they could have stated that in their first letter and conditioned such a offer on the terms of the letter being kept quiet. Chick-Fil-A would be happy because they’re protected their mark and their image, the other company would be happy because they’ve saved on attorney fees and don’t have a cloud of uncertainty hanging over their heads.
I’m not suggesting that the traditional model be abandoned, and many times, the only reasonable approach is going to be to take the cease/desist route.
I’m interested to hear what other trademark-minded people think about this approach, so please comment below, even if (especially if) you think this is a bad idea.
May182010 | Steve O'Donnell
Chick-Fil-A only wants you to eat more chicken.
As reported by the Consumerist, Chick-Fil-A has a beef (get it?) with a company suing the slogan “Eat More Produce.” Is this a case of someone being a bit over zealous and firing off unreasonable cease and desist demands?
On its face, this does sound like a pretty silly controversy. I think it’s doubtful that either Chick-Fil-A or their attorneys really think that someone using “Eat More Produce” will harm their business identity, but is that actually the concern?
I suspect that the actual impetus for the letter is less concerned with this one specific alleged infringement than it is with stopping a problem before it becomes one. If I was Chick-Fil-A’s lawyer (I’m not, but Chick-Fil-A--call me)I would suggest doing the same thing.
If a trademark owner fails to protect their trademark they run the risk of losing it. When a brand becomes so tightly linked to a product that the terms become interchangeable, then the trademark loses it’s unique quality. Escalator used to be a trademark but has become a generic term for a moving staircase; both Kleenex and more recently, Google, have been fighting against this erosion for years.
Consider this hypothetical: Chick-Fil-A does nothing about “Eat More Produce” because its considered too far-fetched of a claim to make; later, someone starts using “Eat More Seafood” and Chick-Fil-A does nothing because they don’t sell seafood; later someone starts using “Eat Mor Tofu,” that’s getting closer, the misspelled “More” is making this a pretty obvious trademark issue. Let’s go one farther and say that some eventually starts using “Eat Mor Turkey.” That finally gets Chick-Fil-A’s feathers ruffled so they take it to court. The judge looks at how Chick-Fil-A has allowed others to use similar slogans without doing anything to police their mark and quite possibly rules that Chick-Fil-A has lost their trademark because they haven’t done anything to protect it.
On the other hand, if Chick-Fil-A had contacted the minor alleged infringers and come to some agreement with each, they would have that paper trail to prove that they haven’t given up on protecting their trademark.
Although I can’t predict what will eventually happen in this matter, my guess is that each side will send a couple letters to the other side before an agreement is made that Chick-Fil-A will not protest the “Eat More Produce” company’s slogan as long as they refrain from entering the fast food or poultry markets. That would protect Chick-Fil-A and let the other company continue as they’ve been without either side having to commit to costly litigation with an uncertain ultimate result.
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