When it’s your company’s mark that seems to be infringed by a true competitor (as opposed to a counterfeiter), the first impulse might be to fire-off a threatening email demanding that the suspected infringer immediately stop infringing or take a license.
To be sure, maintaining your company’s rights in its mark hinges on policing and enforcing those rights, including both detecting and halting infringement. And time is of the essence – a delay of even a few months can bar preliminary injunctive relief in stricter courts.
It is fundamental that your company’s rights in its mark arise, and are maintained, by its exclusive use of that mark to distinguish its goods/services. Failure to enforce your company’s rights at all, or even failure to effectively enforce them, unquestionably weakens those rights. That is, sustained infringement reduces the ability of the mark to indicate to consumers that your company, and only your company, is the source of the goods/services that bear the mark. So over time, not only does failure to successfully halt infringements of your company’s mark lead to consumers no longer recognizing the mark as indicating that only your company is the source of the goods/services bearing the mark, but also the total loss or abandonment of your company’s rights in the mark.
On the other hand, successful policing strengthens your company’s rights in its mark. Promptly and consistently detecting and driving away infringers maintains the ability of the mark to distinguish your goods/services from those of others, and to indicate your company as the exclusive source of the goods/services that bear the mark. Successful policing strengthens your company’s rights in the mark as well as the scope (breadth) of those rights. The chance of successful future enforcement increases with each desirable enforcement resolution.
But try to be realistic in your expectations. Successful challenges to mark infringement only very rarely involve huge monetary settlements. Enforcement of a mark is really more about protecting, preserving, and strengthening your company’s rights, brand, and goodwill than it is about cashing in.
As your company polices its mark rights, beware of the potential for being accused of bullying tactics. The USPTO defines a mark bully as a “trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow”. However, the court of public opinion (particularly with the aid of social media) often views even lawful, reasonable attempts at mark enforcement to be acts of bullying. At times, cease-and-desist (C&D) letters are posted online for public mockery. There is such a thing as bad publicity, and the damage to a mark owner’s reputation caused by a backfired C&D can be difficult to repair.
A thoughtful, creative, and friendly C&D, however, might not only resolve infringement concerns peacefully, but also generate good publicity for both parties.
Consider the efforts made by Anheuser-Busch in recent years, who previously was often accused of mark bullying against craft brewers. A-B made news in December 2017 when it sent an actor portraying a colonial-era town crier (complete with powdered wig and tri-cornered hat!) to the offices of Modist Brewing Company in Minneapolis to recite a real C&D from a scroll. The letter addressed the craft brewery’s use of “Dilly Dilly” (a term registered by Anheuser-Busch) for one of its brews. A video of the funny presentation and transcript of the playful letter posted online generated buzz and good press that no doubt went a long way to helping A-B ditch the bully label.
Your IP attorney can help your IP Team properly evaluate your situation and take the right steps to resolve your concerns, while guiding your company away from some potentially very serious and expensive pitfalls. Your attorney’s top priority should be to resolve the matter without litigation whenever possible.