Create, Consult, Control
News & commentary on intellectual property issues.
Oct262011 | Steve O'Donnell
XXX Domains. Should you care?
XXX top level domains are coming any minute now. Should you worry that your personal or business .com is going to be registered as a .xxx and someone is going to divert your visitors? Will your mom try to visit your personal blog and wind up watching weird porn, the kind you used to have to import directly from ex-Soviet bloc countries?
ICANN, the body that oversees our domain system has opened up registration of .xxx sites. I’m not sure if the impetus for that was so that it was even easier to find pornography on the internet, or if it was that this would make it easier for individuals (or governments) to block pornography. I don’t think it matters. I also don’t think anyone is particularly thrilled at the prospect of xxx domains. I understand the adult industry doesn’t like it because the new domains are more expensive that the usual .com and there is the concern that they’ll be rounded up and forced into the .xxx pigeonhole category.
One thing that has some people concerned is the possibility that pornographers are going to register known trademarks with a .xxx domain and divert internet traffic. I personally don’t see the problem. Even .net domains are second class internet citizens and other top level domains (TLDs) out there have been largely ignored by everyone. Sure, a few people registered different TLDs, for special effects, such as Delicio.us, or for .TV sites, but for the most part, they just haven’t caught on. Most internet marketing people will still tell you to rebrand if you can’t get the .com TLD.
Let’s say, just for fun, that you own pizzahut.com. What will happen if someone buys pizzahut.xxx and posts foot fetish videos? Probably nothing really, someone searching for pizza isn’t going to pull a porn site from Google or Bing. The content of the site is still going to drive search results, not just the name. Is it possible that someone could accidentally type in pizzahut.xxx instead of pizzahut.com? Sure, I guess it’s possible, that’s a pretty weird typo though. That person is probably just as likely to accidentally type in papajohns.com.
Also, registering pizzahut.xxx is a pretty obvious trademark problem, and if someone did try to do that, it could be recaptured by Pizza Hut without much bother.
Still I guess I can see why some people might want to shut down the possibility of someone registering the .xxx version of their trademarked site, so there is a way you can do that now. For the next few days you can file a reservation request with the ICM registry. If you’re interested, take a look at http://www.icmregistry.com/ (Sunrise B option). You’ll need a trademark to do this. You can also contact your favorite registrar. I’m sure any one will be happy to have your business. If you miss the time frame, you’ll likely be able to still register it later if you want.
Personally, I’m not worried about it, and I actually have some reason to be concerned.
Aug082011 | Steve O'Donnell
My ex-employee is using my customer list and materials!
What, if anything, can you do if an employee takes more than some pens when he leaves and starts calling your customers and using your advertising materials?
Ideally, you’ve thought this through and already have something in your employment contract that addresses these things.
What? You don’t have trade secret language in your contract? You don’t have any intellectual property language in your contract? You don’t have any contract? That’s really not that surprising, such things are usually not considered until a business gets burned. It’s like the saying goes: fool me once, shame on you; fool me twice, shame on me.
First, call your lawyer. If an ex-employee is using your client list, you have to move quickly. If it’s a trade secret (generally something of economic value that isn’t known by the public and that you’ve taken some actions to keep secret) you might be able to get an injunction.
If an ex-employee has taken your advertising materials and designs, and is using them for a competing business, you might have a couple options. It is possible that doing something like this is punishable as an unfair business practice, at least it sounds unfair. A clearer claim might be made for copyright infringement, but copyright is one of the more annoying areas of law to start kicking around in, especially if there isn’t clear ownership of the copyrights and a copyright registration in place. Chances are, if you’ve come across this post, you don’t have either.
What every employer should do if have an employment agreement in place when someone is hired that addresses these things before they happen. Ideally, contracts are also put in place between the employer and whoever designs their marketing materials, so that, if needed, a copyright claim can be more easily made against someone that misappropriates the advertising materials. Many of these issues are state-specific, so you should talk to someone licensed in whatever state you’re in.
This, like pretty much everything, is a “ounce of prevention v. pound of cure” issue. It might not be attractive to hire someone to draft these documents if your business’ greatest goal is making payroll next month, but taking care of these fairly simple things can help you continue to make payroll long after someone leaves.
Aug012011 | Steve O'Donnell
Can I get sued for this?
Rarely do I go longer than a few days without someone asking me if they can do something without getting sued. I’d bet every lawyer gets that question, or some version of it, a lot. The questions can rarely be definitely answered. If there was an easy answer, then the person asking probably knows the answer. For example the question “is it OK if I kill my spouse?” doesn’t really need to be asked. Unfortunately (for clients), or fortunately (for lawyers), the questions usually aren’t as easy.
For example, here are four questions I’ve been asked over the last couple weeks:
•Can I sell my drawings of famous articles/landmarks and not get sued? (maybe)
•Can I get in trouble for publishing my erotica that features popular TV/movie characters? (maybe)
•Can I be sued for reusing a picture I found on a website? (maybe)
•Can I get in trouble for counterfeiting arcade tokens (that one was answered with a long, uncomfortable stare)
First of all, you can be sued for just about anything. A neighbor could sue you for letting your grass get too long (if any of my neighbors are reading this: I swear I’ll cut it when the heat breaks). You could be sued if your toddler said something mean to another toddler at the park. Someone could sue you because they think you’re conspiring with Elvis, Oprah, President Obama, and a group of sewer-dwelling reptile-people to steal their thoughts. Granted, the chances of any of these cases being filed is narrow, and the chances of them getting anywhere in a court is even smaller, but they could happen. Asking whether you can be sued for something isn’t the right question to ask. Better questions are what is the chance of being sued, and what are likely damages. An even better question is “what can I do to reduce that chance or eliminate it?”
Often when I get these kinds of questions I’ll need to get more information before I can even suggest a plan. For example, to even start thinking about the question about selling drawings of famous articles/landmarks I needed to know what was being drawn. It’s one thing if you’re drawing a cityscape, it’s quite another if you’re drawing a Coke can or Batman. After that, what context is the famous article/landmark being used? Fan art of Batman is probably not going to rile DC’s feathers nearly as much as a drawing of Batman doing something extremely non-heroic and exceedingly out of character (let your mind wander for a moment, I’m sure you’ll think of something). Another big factor is the money involved. It’s one thing if you‘re planning on selling the art on a street corner or mall kiosk, it’s another if these drawings are being incorporated in a large, national publication that can generate thousands in revenue. Simply put, it’s not generally worth the expense to bring a lawsuit against someone if that suit can’t possibly pay off.
Depending on the exact facts behind a question, the likelihood of being dragged to court might be very low, or dangerously high.
No matter where that likelihood ends up, we can usually lower it a bit more. Ideally, we can get a license from any rights holder, but even without that, there are things that can be done, and precautions that can be taken that can reduce the chance of being taken to court.
Once you know the risk you‘re taking, which is something like: (chance of being sued * estimated legal fees and costs * estimated damages * chance of losing) you can decide if you want to change your course of action or if you want to go forward. Without knowing these things you’re going in blind.
Jun162011 | Steve O'Donnell
A painless trademark dispute
I’ve written before about trademark owners that have been a little overly aggressive in protecting their marks and have had some social media backlash. Recently I represented a trademark owner whose mark was being infringed and had the opportunity to try a more gentle approach that turned out very well for everyone.
A short time ago, I was approached by a business that has been using a trademark (“Mark”) for a couple years, but had not registered it with the trademark office. They discovered that another business in the same market had started using the Mark. We discussed the possible costs of a lawsuit and the problems that can come from a strong-arm approach and I decided that the first thing we should do is to file an application for registration of the mark based on my client’s use, and then to find out a little more about the infringer.
Within a few minutes of searching I discovered that the infringer had just started using Mark and did not file their own application with the trademark office--meaning that they probably had not invested huge amounts of money or time in exploiting Mark, in other words, they probably were not going to be interested in fighting this out in court.
I filed the application for my client and then drafted a letter to the infringer. I took the friendliest approach I could. I pointed out that my client had an application on file and had been using Mark for several years, and that we would defend Mark if necessary, but would rather avoid doing so if we could come to an agreement. Rather than the typical “cease and desist” letter, I stated that from my research it appears that they just started using Mark and that we’re assuming that they did not intend to infringe my client’s use of Mark. I even (with my client’s permission of course) said if they had already invested in printed matter with the mark, that we would allow them to use up their stock of such, provided that they don’t print more.
The response was as good as I could have hoped for. They had not substantially invested in the mark and didn’t realize they were infringing. They agreed not to use the mark again and had no printed material to use up. Easy-peasy-lemon-squeezy.
It’s not often that a legal dispute can be settled with an email exchange, but it is always a possibility. Too often it’s an overlooked possibility.
May122011 | Steve O'Donnell
DC vs Batmobile custom car seller
Did you know you can buy kits to customize your car so that it looks like the Batmobile? Let that sink in for a second: you could own a car that looks like the Batmobile! This has to be the greatest thing ever! Why did no one tell me about this before?
One of the accounts I follow on Twitter, @justiacom, posted a link to a complaint filed by DC Comics against Mark Towle (D.B.A. Gotham Garage) alleging Mr. Towle of engaging in copyright infringement, trademark infringement, trademark counterfeiting, and unfair competition (both under the federal Lanham Act and under California common law).
Looking at the website http://www.gothamgarage.net, it’s hard to say that there isn’t some infringement going on. Rather, it’s pretty clear to me that there is infringement (although that’s ultimately up to a court to decide). There are defenses that can be brought up, there always are--whether they’ll be successful is far too early to say. A more interesting question for me, is why does DC Comics care?
DC owns the Batman copyrights and trademarks. In this case, although there may not be any real, direct damage to DC if they were to allow Batmobile replicas to be made, they are risking abandoning their intellectual property if they don’t do something.
For the sake of argument, lets say that the sale of Batmobile replicas themselves aren’t damaging because DC doesn’t offer for sale, or license someone else to sell such replicas, so DC decides to ignore Mr. Towle’s replica business. What happens then if someone else starts selling Batman costumes, t-shirts, toys, etc (all of which are officially licensed products)? If DC was to exert their intellectual property rights against someone infringing those rights in a market that directly competed with Batman’s licensees, that infringer has an argument that DC abandoned their rights by not exerting them earlier against Mr. Towle, meaning that they really don’t care about protecting their marks and so the marks are not protect-able. It might not be a winning argument, but there is no reason not to keep one step ahead.
Of course, even without the concern that their rights will be lessened by not going after infringers, it’s still entirely proper for them to exercise their rights to protect their intellectual property, even if doing so means that something that sounds totally bad ass, like a Batmobile replica, becomes unavailable.
So, if replica Batmobiles (even if faithful and reverent) could be an issue, why hasn’t DC’s lawyers taken aim at Vivid Video, the makers of Batman XXX (link goes to a safe trailer on YouTube.com)? One reason is probably that DC doesn’t want to risk an adverse finding that the X-rated version is a parody protected by the First Amendment. Parodies are those works that take another work and twist it so that the new work makes fun of the original. In Campbell V. Acuff-Rose Music, Inc. the Supreme Court found that 2 Live Crew’s version of Pretty Woman was a parody that was intended to ridicule the original. Parody in this context is just part of the Fair Use infringement analysis, which is far too complicated to go into in great depth here. I’m not convinced that all porn “parodies“ are parodies under the case law, but a company could reasonably decide not to sue based on a calculation of how much it might cost to drag a case through the initial court and the appeals process on an iffy legal point.
Anyway, I’m trying to get an adjunct professor position at Batmobile State University, so if any of my readers knows the Dean, I’d appreciate a recommendation.
Before anyone gets smart, the picture is a partial frame from All-Star Batman and Robin #1, which you should read. It’s used without permission. I have a good fair use argument and I can make that call, because I’m the goddamn lawyer.
Mar212011 | Steve O'Donnell
Steveodonnell.com, now with fewer penises
About 10 years ago I attempted to register the domain steveodonnell.com and found that it was already taken. I was curious so I opened the site and to my great amusement and dismay, discovered that it was a gay porn gateway.
I, quite reasonably, wanted that domain for myself, so I looked up the registration information with a whois search and set a reminder to check the registration on its expiration date. Every time I checked, the domain registration was renewed by the same company and still contained a big image of the other Steve O’Donnell showing him in all of his <ahem> glory.
I registered the names of my two kids so they wouldn’t have to eventually deal with a similar issue (which I suggest everyone does).
Finally, this year I checked and the domain registration wasn’t renewed, but it was still in its initial redemption period so the original registrant could still renew. I looked into a number of domain “drop-catchers,” companies that buy and resell expired domains, but they seemed problematic--specifically, they tend to want a fee upfront to even try, and then if they do catch the domain, they auction it off to all bidders that paid for the initial catch attempt. In short, working with them wouldn’t guarantee that I would get the domain even though I paid their fees.
Instead, I simply emailed the administrative contact listed on the whois lookup and said that if they were going to let the domain expire anyway, that they should instead renew the registration for a year and then transfer it to me for what I thought was a reasonable amount. In that way, the original registrant received something rather than just letting the domain go and I was assured that I would become the new registrant.
The administrative contact accepted my offer and after a couple weeks of finalizing details, making payment, and waiting for the registrars to update the registration, I am now the proud owner of steveodonnell.com. Currently the URL simply forwards to this site, but I will probably repurpose it at some point. I doubt I’ll use it as my main business domain, since it might be blacklisted by some databases, and I’d hate to have someone try to find my legal practice and see that my site has been blocked for porn. The entire process was painless, fast, and relatively inexpensive--at least as compared to the uncertain process of using a drop-catcher.
So, how does my story interface with intellectual property? Obviously, I have some degree of IP rights to my name, but in this instance, where someone registered my name before I did, I probably couldn’t force a domain turnover. There are a few of us Steve O’Donnells. My one and only Twitter list is a list of people with the same name as me. We’re a diverse bunch. There are also some Steve O’Donnells of note, such as an actor, a writer, and an IT professional. It would be an insane mess if we all got into a fight over who had superior rights to the domain.
On the other hand, lets say that I’ve been doing business as “Steve’s Pizza” (not a great branding decision to use such a mark from a trademarking standpoint--but it’s just for illustration) and I find that another pizza place has already registered “stevespizza.com.” I probably won’t be able to force a domain turnover through the ICANN dispute process, but if the other Steve’s Pizza sells the domain to a competitor of mine, I’d be in a good position to dispute the competitor’s registration and force a turnover, especially if I was able to point to a registered trademark for Steve’s Pizza.
Certainly there are a lot of issues involved if someone has already registered a domain that you want, but there are ways of approaching the issue that can give someone an upper hand in negotiations or can even force a turnover. If you’re in such a situation, you should speak with a lawyer that understands the interplay of domain registration and trademark to create a plan to capture the domain.
If you're dying to see the previous version of steveodonnell.com you can find it on the Internet Archive: Wayback Machine.
Feb282011 | Steve O'Donnell
Zebra trademark backlash
About a week ago, The Lones Group in Washington state brought an action for trademark/tradedress infringement against Dan Rothamel and Strong Team Realtors (in Virginia) over the defendants’ use of some allegedly “confusingly similar” elements. As often happens, this didn’t sit well with a number of people (check out Twitter hashtag #savethezebra). Does the Lones Group have a case? If not, what could they have done differently to protect their marks? Could this have been resolved without a formal complaint and the resulting backlash?
First, I have no particular insight into the facts of this case beyond those I’m assuming to be true from the complaint. So, if you have a problem with what the Lones Group says in their complaint, don’t complain to me. Second, I’m not going to take sides; if you want to read something that cuts down the Plaintiff (Π) or the Defendant (Δ), I’m sure you can find plenty of material online. What I am going to do is point out some difficulties that Π will likely encounter in a lawsuit, offer some suggestions and what they could have done differently, and hopefully add a little something to the discussion.
Trademarks are something, a name, a symbol, a slogan, etc, that identify the source of goods or services. You can rely on the assumption that if you buy a can of Coke, that it was made by Coca-Cola. Trademarks can be a company’s most valuable asset if managed properly. Trademarks can also be separated into registered and unregistered. Registered trademarks go through an examination procedure at the trademark office, unregistered trademarks can gain “common law” rights through their use. There isn’t a particular need to register a trademark, but registration offers some huge benefits such as the right to bring an action in federal court, public notice of the mark, possibly greater damages, a presumption of ownership, and the exclusive right to use the mark nationwide in connection with the goods/services listed in the registration. If you’re using a trademark, you should contact a trademark attorney to discuss registration--there’s really no reason not to register a mark.
Π starting using the word “Zebra” and employing a zebra-theme at least as early as 2005 to identify their real estate business, but did not register the mark(s) as far as I can tell (a quick search of the trademark office records did not find it, and if there were registrations, the complaint would almost certainly have noted the registration numbers). Later, Δ started using the domain “realestatezebra.com” for a real estate blog. Had Π registered the trademark, their position to have Δ’s registration canceled or to get the domain turned over to them would have been much stronger through ICANN’s dispute system.
Π discovered that Δ was using a mark they considered their own, didn't care for it, and filed a trademark infringement lawsuit.
Since the marks were not registered, Π will have to demonstrate that their Zebra marks have acquired secondary meaning (meaning that people in the market for real estate marketing services identify “Zebra” as meaning the Lones Group, and that either their mark is known where Δ does business or that Δ is doing business where the mark is known. So, either the mark is known in VA (assuming Δ only does business in VA, for example) or, if the mark isn’t known in VA, that Δ is doing business in WA (or wherever Π is known)). It’s certainly possible, but it is an extra layer of work to do in the lawsuit which could have been avoided had Π registered the mark.
Π will also have to show that Δ is using the disputed mark in the same market. Trademarks, both registered and unregistered, can peacefully co-exist if their markets are different enough. Zebra (as used for real estate services) could, and does, happily exist along side Zebra Technologies (specialty printing company) and Zebra Tattoo and Body Piercing. It’s extremely unlikely that anyone is going to go for a tattoo and ask the artist about their bar code label printers or their real estate services.
In this case, after a minute on each party’s website, Π appears to be a marketing consultant for real estate agents, while Δ seems to primarily be a realtor, although it looks like he does do some educational work in the field. Is that the same market? I’m not sure of the answer. If it’s not the same market, is it close? If the markets have enough connection, even though they’re not exactly the same, it could be close enough to infringe. The whole thing comes down to likelihood of confusion. How likely is it that a consumer would confuse Π and Δ based on their use of “Zebra?”
Is the case a slam-dunk, no. Is it frivolous, no. If the Lones Group asked me about it, I wouldn’t have suggested ignoring it. Trademark owners have a duty to police their mark or they risk losing it. Based on what little I know about the case, it sounds perfectly reasonable to bring the action, but was that the best route to take?
There seems to have been an explosion of late of trademark owners being overly aggressive about protecting their marks, or maybe it’s just that the internet has picked up on it and these things are being publicized more. I don’t think this is a case of a trademark bully, but it still could have been handled differently.
I hate second guessing Π because I have the advantage of seeing the fallout the lawsuit has caused, but this is an era of social networking and the fallout could have been foreseen. For one thing, it’s rarely a great idea to sue a potential client, that just doesn’t sit well with other potential clients. If this same exact controversy came up a couple years ago, a few bloggers would have picked it up, but it probably wouldn’t have caused anywhere near the backlash that it has. If it came up a decade ago, it’s doubtful many outside of the parties would even have found out about it. Today though, one has to assume that any action will draw the attention of every person that might be interested in it.
If I was handling the matter for Π (and admittedly, this is with the benefit of hindsight), I would have attempted to open communication with Δ and tried to convince them to abandon “Zebra.” If that failed, since the market overlap (both geographic and by type of service) isn’t exactly in unity, I would have suggested that the matter be settled with a disclaimer on Δ’s materials that any use of “Zebra” or of “Zebra themes” does not imply a connection with Π. If that failed, I’d have to take an even closer look at market overlap before suggesting further action. Since it’s not a slam dunk case, and since the marks were never registered, I might have drafted an opinion letter discussing how Δ’s use of “Zebra” and related were not actionable trademark infringements or at least that it was questionable. Such an opinion letter could be used later to defend against a claim of trademark abandonment if an action was initiated against a more clear infringer.
Bottom line, if you have a trademark--register it to put yourself in a better position if someone starts using the same, or confusingly similar, mark; and before taking action to protect your trademark, consider social networking backlash. One thing you don’t want to do is cause damage to your brand by trying to protect it.
I’m interested in seeing some comments and questions. I hope this post is of some value, but if nothing else, you’ve learned that lawyers use Π and Δ as shorthand for Plaintiff and Defendant--that alone is worth the price of admission.
Photo by Nevit Dilmen and licensed under the GNU Free Documentation License
Aug312010 | Steve O'Donnell
A City Authentic
Recently, the city of Lancaster, PA launched a new brand--“A City Authentic”--with a little square rose logo. Within a few days, someone posted a clip on youtube pointing out that the logo has already been in use. Oops. What could the city have done to prevent this embarrassment?
The city is not a client of mine, so I can’t speak with any authority on what they did, or didn’t do. My suggestions assume certain facts I don’t have, but are general enough to apply to any branding action.
First, the city’s contract with their designer should have included a warranty of non-infringement. Basically, the contract should have stated that the designer warrants that the design is original and doesn’t infringe on any one else’s copyright or trademark and that the designer will shoulder any legal actions to the contrary. That alone would have saved the city some embarrassment since it could have shifted the blame to the real responsible party.
Second, as noted in this article from Lancaster Online the city registered the logo with the copyright office. Presumably, both the city and the city’s design/marketing company thought that doing so would “clear” the image. That presumption fails for a couple of reasons. Copyright protects original works of authorship, and the logo is obviously not original. Any copyright action trying to defend this logo will probably fail at the motion to dismiss stage. Also, the logo is being used in a trademark sense, so it should have been vetted through the trademark application process, which is generally more robust than the copyright registration process.
If they had contacted me or another trademark practitioner, would the problem have been caught before it was used? It’s difficult to say. I haven’t searched for the mark since learning about the problem because I don’t think there is any way I could divorce myself from the knowledge that a problem exists. However, if the trademarking registration process had been completed before the brand was launched, the city would be able to point to that as proof that their use of the logo was substantially dissimilar to any other use of the graphic.
Lastly, if I, or someone else, discovered the similarity to another logo, a simple license agreement could have been drafted to clear the city’s use of the graphic.
Now, the city has to engage in damage control and will probably have to spend more money on that and on possibly changing its branding than it would have if it had consulted with me or another intellectual property attorney in Lancaster.
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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