C3 Patent and Intellectual Property Law

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.