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John E. Petite
Trademarks are designed to foster a company's reputation and goodwill. To safeguard that goodwill and preserve their trademark rights, trademark holders must adequately police their marks. Increasingly, though, individuals and small businesses accused of infringement are using social media campaigns to label legitimate trademark enforcement as "trademark bullying."
In some instances, these David vs. Goliath stories have attracted national headlines with potentially devastating public relations effects for the trademark owner's brand value and reputation, a phenomenon at odds with the very aims of trademark enforcement. In this environment, trademark holders and their counsel should carefully consider how to police their marks—while lessening the likelihood that they will be labeled a trademark bully.
If trademark holders do not police the market and stop unauthorized third-party usage, the strength of their mark, and its corresponding value, will be diluted as similar marks crowd the marketplace and reduce the distinctiveness of the original mark. While vigilant enforcement is especially critical for the holders of "famous marks"—marks so distinctive and widely recognizable that they rise to the level of "household names"—even holders of marks that do not qualify as "famous" must diligently police their marks.
Ultimately, if confusingly similar third-party usage becomes widespread, the mark may lose its distinctive quality and perhaps even fall into the public domain, effectively stripping the trademark owner of his or her rights. BellSouth. v. DataNational (Fed. Cir. 1995). Marks that are not inherently distinctive—and thus are inherently weak, but have acquired distinctiveness based on extensive advertising—are particularly prone to losing strength or, worse, any protectability at all, as a result of third-party usage.
In the past, trademark enforcement rarely attracted the public eye. Now, accused infringers increasingly air their grievances on social networks and court mainstream media coverage. Accused infringers pressure trademark holders to back down from their claims by painting them as deep-pocketed bullies who, through threats of ruinous litigation, extract unfair settlements from the "little guy."
One prominent example involves Chick-fil-A's attempt to stop Vermont artist Bo Muller-Moore from using the mark "Eat More Kale." In 2001, Muller-Moore made T-shirts with the slogan as a favor to a local kale farmer, and had been selling them a handful at a time ever since. When Muller-Moore tried to register "Eat More Kale" with the U.S. Patent and Trademark Office, Chick-fil-A sent him a cease-and-desist letter stating that the proposed mark infringed on Chick-fil-A's mark, "Eat Mor Chikin."
Muller-Moore began a social media campaign against Chick-fil-A. More than 37,000 people signed a petition chastising Chick-fil-A for "corporate bullying." Nearly 2,000 people donated money, raising over $87,000 for Muller-Moore's legal defense fund. The New York Times, The Economist, and numerous other media outlets championed Muller-Moore's cause, and expressed disbelief that anyone could confuse "Eat More Kale" with Chick-fil-A's efforts to sell chicken sandwiches. This negative coverage resulted in Chick-fil-A being viewed as overreaching.
In reality, while Chick-fil-A claimed "Eat More Kale" confused consumers, Chick-fil-A also claimed "Eat More Kale" diluted its famous mark, "Eat Mor Chikin." Unlike the classic trademark infringement case, owners of a famous mark can enjoin use of a mark that impairs the distinctiveness of the famous mark ("blurring") or harms the reputation of the famous mark ("tarnishment"), even when there is no competition between the goods promoted under the marks and consumers are unlikely to confuse them. 15 U.S.C. § 1125(c).
If Muller-Moore were allowed to register "Eat More Kale," next might come "Eat More Tofu," then "Eat More Turkey," and so on until the distinctiveness of "Eat Mor Chikin" was substantially diminished. Though this point was not addressed in the media, Chick-fil-A vigorously pressed its dilution claims before the USPTO, which preliminarily denied Muller-Moore's registration. The goodwill associated with Chick-fil-A's mark, however, was clearly harmed by continued negative publicity, despite what appears to be legitimate trademark enforcement. Consequently, Chick-fil-A's enforcement action, designed in part to preserve goodwill, actually diminished it.
This new reality puts trademark holders in a difficult position. Policing at the outer edges of trademark rights increases the risk that an accused infringer will embark on a campaign to shame the trademark holder and sully its good name. On the other hand, failing to police the borders of your trademark rights potentially allows unauthorized uses of conflicting marks to progressively erode the strength of your mark.
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