“Is a trademark lawsuit worth it?”

By Paul

Trademarks are fickle things. You only have them so long as people know and associate you (and only you) with that trademark. Whether or not you have a registration, your rights exist only exist if that trademark continues to distinguish you from everyone else.

So, if you have found a potential infringer do you have to sue or can you let it slide? The tough answer is that you have to stop them, and here’s why:

If you and your competitor are selling the same or similar goods or services, how will consumers know which is which? Even if your product isn’t exactly the same, consumers might think that you could have expanded your offerings into that area if its not too far off. If someone out there now sells products related to your own with the same name, you have to try to stop them if you want to keep your trademark distinctive.

If the other trademark is a little different, but still sounds the same, means the same, or looks the same as your own trademark and its used on the same product you have to stop them as well. Consider differently spelled trademarks that sound the same. If a customer is telling a friend about your great product, will they be able to hear the difference between “BISCOH Brand Product” and “BIZCO Brand Product,” or “BOSCO Brand Product?” Probably not. The longer those sound a like products are on the market, the less consumers can be expected to consider one the original and the other the knockoff.

Courts have also developed a doctrine called “laches.” That is basically a doctrine considering the fairness of bringing a lawsuit years after you knew or should have known about a legal problem. If you allow your competitor to continue building their market, investing time and money in their own infringing trademark and could have stopped them before they invested all that money, courts aren’t as willing to enforce those trademarks. There is no absolute cutoff point for laches to take effect, but as years go by, the chances you will be able to win your trademark lawsuit get slimmer and slimmer.

A registered trademark gives you a tool to keep competitors at bay, but it wont do it for you. Policing your trademark and occasionally bringing a lawsuit is the only way you can actually keep your trademark. No one is going to stop a competitor from infringing your marks if you don’t. The longer you wait, the less likely it is that you will be able to stop them.

Trademarks and Oil Spills

By Paul

The Twitter account @BPGlobalPR has more followers than the real BP Twitter account. Yes its fake and they use the BP name and logo. The tweets are both biting and funny, at least to people who don’t work at BP. But is it trademark infringement?

If trademark law exists primarily prevent confusion in the marketplace and to let companies control their own reputation, then probably not. Does @BPGlobalPR tarnish BP’s brand? Probably, but it seems as though everyone knows its a parody, and how could you not with tweets like:

“We feel terrible about spilling oil in American waters, we’ll make sure the next spill happens where the terrorists live. #bpcares”

“Please help us with rebranding. We’re not calling it an “oil spill” anymore, now it’s a “Southern Fun Party”. #bpcares”

So, if a decent trademark infringement or dilution claim could be made, BP might ask themselves, “should we?” The answer to that might be “no.” The fallout from a trademark lawsuit now could be worse than the tweets. (See Streisand Effect) It might make it seem like BP is trying harder to plug the word leak than the oil leak.

The value of a trademark is based in large part on the reputation of the company. To BP’s credit, it seems as though their tweeting has been pretty focused on keeping people updated about the oil spill. This might be one time where protecting a trademark might be done best by letting people vent and take a few jabs.

UPDATE/CLARIFICATION: I am pretty sure that this wouldn’t be a good trademark case for BP anyway. It is such a clear parody as well as a non-commercial, non-competing use. However, there have been some inconsistent results in the area of trademark parodies. Sometimes judges as well as brand owners just don’t have a good sense of humor. Thanks to @cathygellis for the reply tweet and comment.

ISP ordered to pay $32 million for contributing to trademark infringement

By Paul

This is an interesting story especially because the amount of damages awarded are so high. The ISP was a host to a number of sites that were selling counterfeit fashion goods like Louis Vuitton handbags. The ISP had claimed an exemption under the DMCA, however the court correctly concluded that that only applied to copyright not to trademark infringement. Something for any ISP or hosting service to keep in mind.

Here is the link.

Hat tip to @EvansIPLaw for posting a link to this article on Twitter.