Beyond your Legal Rights: Trademark Bullying

Trademark BullyTrademark bullying is when a trademark owner zealously enforces their trademark rights outside the scope of the trademark law. Trademark bullying does not necessarily result in negative legal reactions, but the public backlash from trademark bullying can be costly. Consult your trademark counsel when determining the right course of action to infringement. Sometimes your marketing staff and your lawyer need to work together in order to produce the best outcome for the company.

“Bullies”                                                                                                                                           

Continual monitoring and enforcement is essential to protecting your trademark rights from infringement and dilution. However, if you believe that another party inadvertently infringed upon your trademark right, you might consider calling or sending a polite close and desist letter instead of threatening lawsuits. A polite initial response can reduce potential negative publicity and public backlash and perhaps even drum up some positive publicity. Consider the following options when you identify an infringer that may cause you bad publicity.

Have you Tried Calling?: A written cease and desist letter may be used against you in negative ad campaigns. Instead, you may wish to call the infringer and explain the situation. You can assert your trademark rights while minimizing misunderstandings by simply calling the other party.

The Polite Cease and Desist: A cease and desist letter can effectively assert your right while giving the other party an opportunity to fix the infringement issue. This method is more likely to elicit positive response from the accidental infringer and resolve the issue faster.

The Permission Letter: Unique situations require tailored responses. Here is a creative method of drumming up positive PR while responding to a legal outside trademark use.

“Targets”

The first step is to determine if the other party’s action (usually a cease and desist letter) extends beyond their legal trademark rights. Such analysis can be quite costly but necessary in order to determine your next course of action. If the financial value attached to your brand is still minimal you might consider changing your brand within a reasonable period of time and demanding compensation for the cost of rebranding. If the cost associated with your brand (in terms of branded products, loss of market shares, cost of rebranding, and loss of customer good will) is too great, ask your lawyer about the following options:

Coexistence Agreement: A trademark agreement will allow both parties to use similar marks and coordinate efforts so that neither mark is weakened.

Consent Agreement: The registered party agrees to allow the other to use the mark under certain terms for some incentive.

If it is difficult or impossible to negotiate with the other party, you may consider more costly actions such as…

Litigation: You can attain a judgment from the court that you are not violating your opponent’s trademark rights.

 

Speak Your Mind

*