Strategically evaluating infringements: cease and desist or cease insisting?
‘Enforce it or lose it’ is the maxim that runs through most brand protection strategies – but is it the smartest way to proceed, or even legally necessary? Learning to live with a little unauthorised use could yield surprising results for brand owners.
We know that we must triage our enforcement efforts, whether due to company culture, lack of internal resources or concerns over legal budget. The law allows us to do this by supporting flexibility rather than requiring perfection. Instead of employing a scattershot process of churning out demand letters, we can be strategic in our prioritisation by closely examining the nature of the harm to our brand and to consumers, avoiding disputes that may result in a PR catastrophe and protecting our trademark rights at times where they may be vulnerable. Creative brand protection ideas can achieve a resolution that is better for our brand, our reputation, our fans and potential business partners, and the trademark community.
From the moment we are nascent trademark lawyers, the adage ‘trademark rights must be enforced or lost forever’ is thrust upon us. Throughout our careers, the concept of ‘enforce it or lose it’ dictates many of our brand protection activities – from enforcement criteria and processes to legal budgets and bottom line. It certainly influences the public’s perception of our brand, for good or for ill.
But how often do we stop and re-examine this adage? Do we know where the line is (or should be) drawn between activities necessary to protect our rights and activities that are needlessly aggressive and costly? This article briefly examines the US statutes and case law that underlie the ‘enforce it or lose it’ concept in an attempt to pinpoint the real (not just perceived) danger of failing to enforce trademark rights. In light of this background, the article then offers practical tips to create or re-examine a trademark enforcement programme with an eye towards those activities that will provide the most meaningful brand protection without miring your brand in controversy for overly aggressive trademark enforcement.
Many trademark practitioners already know that they must triage and strategically focus their enforcement efforts. Especially for popular or well-known marks, there may be so many uses of or references to these marks that it would be impossible to take action on every single one of them. More importantly, we know that we need to triage because our legal budgets dictate that we must. Two recent surveys confirmed what many in-house practitioners already know to be true – adequately budgeting for trademark expenses, including enforcement costs, remains an ongoing concern. Earlier this year World Trademark Review released the results of its Global Benchmarking Survey (“When the sums don’t add up”, World Trademark Review 49). According to the survey, the majority of in-house trademark budgets have been cut or frozen over the past three years, with some groups predicting further cuts in 2015. At the same time, the level of online enforcement activity in which lawyers have engaged has increased (as reported by 45% of external counsel). In another recent survey conducted by Hogan Lovells on the challenges facing trademark practitioners, it was revealed that the second-most concerning challenge was the trademark budget (accessible here). Whether for numerosity or resource-related purposes, prioritising enforcement efforts is thus a necessity.
What does the law require?
But is it possible to triage and scale our enforcement activities without sacrificing our rights? What about the old adage? Will the law permit us to let some uses of our trademark go undetected or unaddressed?
The premise of ‘enforce it or lose it’ is based on the definition of ‘trademark abandonment’ in the US trademark statute, the Lanham Act. The act states that a trademark will be deemed abandoned “[w]hen any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark” (15 USC 1127). It is these acts of omission (ie, failing to take action against unauthorised trademark uses) that spur abandonment claims and strike fear into the hearts of trademark practitioners and brand owners.
It may be surprising to learn, then, that some courts find these acts of omission to be wholly irrelevant in adjudicating a defence of abandonment. A collection of courts, including the Ninth Circuit Court of Appeals and its district courts, instruct that whether a plaintiff has pursued infringement actions against different defendants is immaterial to whether a plaintiff can pursue an infringement action against this defendant (eg, see US Jaycees v San Francisco Jr Chamber of Commerce, 354 F Supp 61, 73, (ND Cal 1972), judgment aff’d, 513 F 2d 1226, 185 USPQ 257 (9th Cir 1975) (“the existence of infringers other than the defendant was irrelevant to a determination of whether the defendant should be enjoined from continuing in its infringement of plaintiffs’ trademarks”) and Century 21 Real Estate Corp v Sandlin, 846 F 2d 1175, 1181 (9th Cir 1988) (evidence of other infringers “would be irrelevant under the law of this circuit”)). In short, a plaintiff’s failure to prosecute other infringers is no defence to infringement in these courts.
Case law offers no magic formula to determine the volume of infringements that one must stop in order to preserve source-identifying capacity
In other courts the extent to which the plaintiff has policed its trademark is relevant and taken into account in adjudicating a claim of abandonment. However, the bar for proving abandonment is extremely high, for several reasons. First, abandonment in a trademark context must be strictly proven, as it constitutes a complete forfeiture of rights (see PAB Produits et Appareils de Beaute v Satinine Societa in Nome Collettivo di SA e M Usellini, 570 F 2d 328 (CCPA 1978)). Second, a party claiming abandonment must show that the brand owner’s lack of enforcement is so dramatic that it has caused the trademark to lose all source-identifying function. Even showing that the mark can identify more than one source is insufficient to prove abandonment of trademark rights (see Wallpaper Mfrs, Ltd v Crown Wallcovering Corp, 680 F 2d 755 (CCPA 1982)). The US Trademark Trial and Appeal Board also follows this general theory, stating that: “it is entirely reasonable for the opposer to object to the use of certain marks in use on some goods which it believes would conflict with the use of its marks on its goods and services while not objecting to use of a similar mark on other goods which it does not believe would conflict with its own use” (McDonald’s Corp v McKinley, 13 USPQ2d 1895 (TTAB 1989)).
The case law offers no magic formula to determine the volume of infringements that one must stop in order to preserve source-identifying capacity. Indeed, one recent court explicitly rejected such a formulaic approach, holding that it was inappropriate to consider the ratio of enforcement effort costs to company profits as a proxy for whether the company had enforced its mark sufficiently (Elliott v Google, Case CV-12-1072-PHX-SMM (D Ariz, September 10 2014)). Even though the jurisprudence provides no bright line, the cases are suggestive of the outer edges of that continuum: the most common paradigm where courts have found abandonment is where a trademark owner has done little to enforce its rights over a long period of time (eg, see Herman Miller Inc v Palazzetti Imports and Exports, 720 F 3d 298 (6th Cir 2001), where 40 years of alleged non-enforcement of trade dress was found to constitute abandonment due to loss of source-identifying function; remanded for trial; Saxlehener v Eisner & Mendelson Co, 179 US 19 (1900), where 20 years of non-enforcement of a trademark resulted in a loss of source-identifying capacity; and BellSouth v DataNational Corp, 60 F 3d 1565 (Fed Cir 1995), where 30 years of permitting use by third parties without claiming proprietary rights resulted in generic status). What is apparent, though, is that a challenger must prove “more than the lack of an aggressive enforcement program in order to prevail” on a theory of abandonment (Taza Systems LLC v Taza 21 Co LLC, 2013 WL 5145859 (WD Penn, September 2013)).
To answer the question posed at the beginning of this section, the law does permit us to let some uses of our trademark go undetected or unaddressed. No matter which line of cases the courts in your jurisdiction have followed, the law does not require perfection in your enforcement strategy. In fact, it supports a strategic enforcement programme; to do otherwise would “unnecessarily clutter the courts” (Wallpaper Mfrs, Ltd v Crown Wallcovering Corp).
Enforcement is not a goal in and of itself and its success is not measured by the number of demand letters sent or the breadth of perceived infringements quashed. An enforcement programme is a means to an end: ensuring that confusing misuses of your brand do not cause the brand to lose all source-identifying capacity. This sentiment was most colourfully put by one court in this way: “The owner of a mark is not required to constantly monitor every nook and cranny of the entire nation and to fire both barrels of his shotgun instantly upon spotting a possible infringer” (Engineered Mechanical Services, Inc v Applied Mechanical Technology, Inc, 584 F Supp 1149, 223 USPQ 324 (MD La 1984)).
Considerations for a strategic enforcement programme
Now that we know that we can and should triage, how do we decide when to use the shotgun and when to lay down arms? This section takes a deeper look at some considerations for a strategic enforcement programme. Obviously, one size does not fit all for enforcement programmes – some of these considerations will speak to you more than others, depending on the size and nature of your brand. However, in devising your plan of attack, it is prudent to ask yourself the following questions.
What is the harm to the brand?
Fundamentally, any enforcement programme should be based on the objective of preserving source-identifying capacity. If one has the good fortune to have such a well-known mark that genericide is a more pressing issue, there are numerous other resources which discuss tactics such as friendly corrective letters to dictionaries and creative public education campaigns, all targeted towards reminding the public of the mark’s source-identifying function. However, for more garden-variety (and less genericide-inducing) misuses of a trademark, you should primarily consider whether the unauthorised use impairs the ability of the mark to function as a source identifier. When put in that specific context, some uses of a trademark may not answer this question in the affirmative – meaning that although technically unauthorised, they may not be strategic targets for infringement.
However, many trademark practitioners do not merely protect the trademark, but also act as stewards of a brand. As such, we are concerned about multiple dimensions of integrity of our brand. It is therefore prudent to consider other types of harm to the brand, including whether unauthorised use damages the brand image that we would like to project. Some unauthorised uses, if a reasonable consumer believes they are sponsored by or affiliated with our brand, could negatively affect the goodwill of the company and the brand’s message. Conversely, unauthorised uses that are in line with the brand message or supportive of the brand – as many fan sites typically are and some social media pages can be – could likely go unaddressed without compromising brand message or source identification.
As we look at the dimensions of harm to our brand, another question to consider is whether the damage being done to the brand is trademark infringement. When confronted with references to our marks that we feel damage our brand, it is easy to lose sight of this question. Many incidents that involve a brand do not implicate the kinds of use in commerce or consumer confusion that are the necessary building blocks of a trademark infringement claim. While third parties expressing negative opinions about the brand may be damaging, they do not usually constitute trademark infringement. Likewise, videos depicting company employees misbehaving while on company premises or while wearing company uniforms could undoubtedly damage the brand image, but are not necessarily trademark infringement.
Are there PR implications to enforcement?
Sometimes the harm done to our brands is the harm we do ourselves. In an era when an overly aggressive demand letter can be posted online in short order, now more than ever we need to be concerned about the PR impact of our enforcement efforts. A prudent guideline is to put yourself in the position of the person receiving the letter and never write a letter that you would not want shared on the target social media channels. A demand letter that is too contentious or completely tone deaf can damage your brand even more than the infringement that necessitated it in the first place. Better yet, do not write a letter at all. In instances where the infringement is not egregious or the infringer could benefit from some education about your trademarks, it is much better simply to pick up the phone. This creates no written record that could be misconstrued and the person on the receiving end may appreciate that you took the time to call, possibly making him or her more cooperative and understanding of your position. There is always the ability to escalate with the nasty-gram if this approach is unsuccessful.
Meaningfully engaging with social media can be a winning solution on multiple fronts. The best defence is a good offence, so registering social media account names before your product launch will limit the potential for infringements in the first place. A strong, well-marketed social media presence will direct consumers to your official site when they are searching for your brand, effectively minimising the damage of potentially infringing copycat pages. Engaging online with fans and would-be infringers can afford you a kind of social media goodwill that you can lean on when having to conduct enforcements online. For some smaller businesses which may not have the resources to fight expensive court battles to protect their trademarks, pleading an infringement case to a social media community can be an extremely effective way to rally support and illustrate the impact of this negative PR to the infringing party (see “Can social media be a more cost-effective tool than the law?” WTR Blog). And parties can use their online presence to draw on the evidentiary support of their fan base, as programming language Python did recently to collect customer statements of trade origin in order to defeat a squatter’s application for the PYTHON mark before the Office for Harmonisation in the Internal Market (see http://pyfound.blogspot.se/2013/02/python-trademark-at-risk-in-europe-we.html).
Additionally, PR problems can be costly and detract from your legal budget and bottom line. You may have to expend resources on external counsel fees to manage the issue, which can be a costly distraction to the core of the business. If you decide that enforcement is important enough to risk the potentially negative press, looping in the PR team early to create a proactive plan for how to deal with the issue will allow you to tell your side of the story as quickly as possible.
Is this arguably fair use?
Nothing draws negative PR more quickly than a target which believes that it has used your trademark fairly. Many practitioners are adept at detecting descriptive and nominative fair uses, and know that many of these uses are not confusing and do not detract from the brand message. Other types of fair use can be harder to identify immediately and sometimes harder to tolerate. Third parties who use marks in the course of First Amendment-protected activities can offer messages that are not always favourable to your brand. However, “where the unauthorized use of a trademark is for expressive purposes of comedy, parody, allusion, criticism, news reporting, and commentary, the law requires a balancing of the rights of the trademark owner against the interests of free speech” (Yankee Publishing, Inc v News America Publishing, Inc, 809 F Supp 267 (SDNY 1992)).
In addition to allowing for this balance in the trademark law, erring on the side of considering a particular use to be fair will achieve other strategic enforcement objectives: it may conserve budgetary resources by sparing you a costly trademark battle over whether the use was fair and save you from a PR battle that will only further highlight the critical message proffered. Further, since the law supports these types of use, they are unlikely to contribute to the loss of source-identifying capacity.
What is the harm to the consumer?
Also consider whether the unauthorised trademark use has the potential to harm consumers. The answer to this question may depend on the type of product that your company produces or the type of product that the infringing mark is used upon. Certain types of goods – including pharmaceuticals, electronics and pesticides (to name a few that have been in the press recently) – can pose serious health and safety concerns if improperly manufactured. Therefore, consumers can suffer real and serious harm if counterfeit versions of these goods bearing your marks are unsafe. Even if your exact product is not being copied, you may still elect to focus efforts on items that otherwise bear your marks if they are of a type that could harm consumers if not removed from the marketplace. Targeting online sources that use your brand to lure consumers into providing personal or financial information or downloading viruses would similarly mitigate any potential harm to consumers.
In contrast, you may not see the same return on investment in taking aggressive action against other types of goods, such as items made by and/or for fans for limited distribution such as t-shirts, hats and other wearables.
Is this the right time to engage in this dispute?
Timing may end up being critical in deciding whether to engage in a trademark dispute. Some misuses of a mark, especially online, can be ephemeral in nature. Instituting a waiting period between time of detection and time of enforcement is a reasonable approach and may save resources in enforcing against uses that would not be there in a few months anyway.
Also consider whether this is the right time for your team or company to engage in trademark litigation. We cannot always control when litigation is thrust upon us, but an overly threatening demand letter may give the recipient the standing needed to bring a declaratory judgment action, very likely in an inconvenient forum. If this is not the right time to expend your budget or internal resources on costly litigation, consider whether a more measured enforcement action is appropriate so that you do not find yourself on the receiving end of an unexpected lawsuit. If litigation does become necessary, starting out with a more restrained approach may give you the time and ability to bring a case on your terms.
Determine also whether this is a good time for your trademark to engage in a dispute. Put another way, is your mark vulnerable to attack? Trademarks that are on shaky ground – even those that have incontestable US Patent and Trademark Office status (see Natron Corp v STMicroelectronics, 305 F 3d 397 (6th Cir 2002)) – can find themselves in a defensive position if asserted at an inopportune time (see Schwan’s IP, LLC v Kraft Pizza Co, 460 F 3d 971 (8th Cir 2006); and Home Decor Center v Google, Case No CV-12-5706 (CD Cal, May 2013)). This is tricky for rights holders that need to be able to prove substantially exclusive use in order to claim acquired distinctiveness (15 USC 1052(f)). In any event, be sure to balance the need for this particular enforcement against the likelihood that the target could successfully attack your trademark rights.
Are there any creative solutions to this problem?
Finally, challenge yourself to think outside the box and consider whether there are any creative solutions to the misuse of your mark. Being mindful of the position of the person or entity on the receiving end of your infringement claim can help to achieve meaningful (even if incomplete) results with less friction. If the infringer is a small entity without the resources to make quick changes, offer a lengthy phase-out period of the infringing product or service (while being secure in the fact that that repeated and lengthy phase-out periods do not contribute to trademark abandonment – see Exxon Corp v Oxxford Clothes, Inc, 109 F 3d 1070 (5th Cir 1997). If your objective is to clear the trademark register of infringing marks, offering to pay for new trademark applications may end up costing you less over time, especially if your good-faith gesture makes it less likely that the target will dig in its heels and fight your efforts. Consider asking for a disclaimer in instances where the likelihood of consumer confusion is slight and the alternative is the complete cessation of the target’s business or website.
Think about whether your target could be a potential fan, collaborator or business partner. Can you turn a negative into a positive for both sides? If the infringer could be educated to use the mark in an appropriate way, might it be possible to fold the misuse into an approved licensing programme (or even consider creating such a programme if these types of use become more prevalent)? Alternatively, can you ask someone from an internal group that routinely works with partners (eg, community outreach, developer relations or business development) to reach out on a business-to-business level and explain the situation in a non-threatening, non-legal sounding manner? Individuals in these groups may be better able to spot how your company and the target could work together. Offer something else of value that only you can give – can you make the target a beta tester of your product or service in exchange for compliance? Consider also collaborating with fan sites to create content together. Coca-Cola recently made trademark news by engaging in collaboration, rather than litigation, with fans that had a significant presence on Facebook. As brand owners increase their use of strategic options such as collaboration, such stories will be more of the norm, rather than headline-making exceptions.
Be open to innovative and unorthodox ways of pursuing your trademark protection goals. If you detect uses of your brand that arguably increase brand awareness and product recognition (think social media favicons), create brand guidelines to shape third-party use in ways that are beneficial to your brand, rather than attempting to eradicate these unauthorised uses. Public education campaigns can be another useful tool for mitigating consumer confusion. The Swiss Watch Federation engaged in an innovative public education campaign when it created a mock site purporting to sell counterfeit watches, which it promoted heavily using the same search engine optimisation tactics used by counterfeiters. When visitors to the mock site attempted to purchase the watches, they were directed to the federation’s internal site detailing the actions that it takes to curb counterfeit sales. Such innovative programmes can have a broader impact than a smattering of cease and desist letters.
We know that we must triage our enforcement efforts, whether due to company culture, lack of internal resources or concerns over legal budget. The law allows us to do this by supporting flexibility rather than requiring perfection. Instead of employing a scattershot process of churning out demand letters, we can be strategic in our prioritisation by closely examining the nature of the harm to our brand and to consumers, avoiding disputes that may result in a PR catastrophe and protecting our trademark rights at times when they may be vulnerable. Employing creative brand protection ideas can achieve a resolution that is better for our brand, our reputation, our fans and potential business partners, and the trademark community.