Intellectual Property Attorney

What Is The Appropriate Level Of Trademark Enforcement?

As reported by Crain’s New York Business, a recent seminar at Fordham University’s Fashion Law Institute for New York Fashion Week focused on the infringement of fashion brands and logos and specifically, the extent to which famous fashion brands pursue the unauthorized use of their trademarks and logos in connection with such activities as websites, tattoos and artwork.

The seminar’s fashion industry participants revealed a wide spectrum of enforcement strategies. Representatives of Ralph Lauren indicated that the company receives requests on a daily basis to use its brand name and/or the polo player logo on such items as birthday cakes and tattoos. Ralph Lauren’s Senior Director of Intellectual Property and Enforcement opined that in some cases, ignoring unauthorized usage of the brand name and/or logo may be the best policy in view of negative public relations that may result from aggressive enforcement. Ralph Lauren picks and chooses its enforcement battles, spending more time on monitoring counterfeit products that are sold for profit than artistic uses that have possibly infringed Ralph Lauren’s trademark rights.

Louis Vuitton, on the other hand, has a zero tolerance policy in connection with any unauthorized use of its LV logo, having aggressively enforced its trademarks rights with regard to such diverse items as dog toys and condoms. As one panelist indicated: “[i]t’s death by a thousand cuts. If you don’t protect your rights, they will slowly whittle away.”

This begs the question: what is the appropriate level of trademark enforcement? It is well settled that trademark owners have a duty to be pro-active and to police the relevant marketplace for infringers. If the trademark owner acquiesces to infringement, it will find that the strength of its trademark as an indicator of source or origin has been diminished by the presence of similar marks. Should, however, a trademark owner pursue every unauthorized use?

The general rule is that it is not necessary for a trademark owner to object to every unauthorized use. In fact, the Trademark Trial and Appeal Board has recognized that “it is entirely reasonable for the [trademark owner] to object to the use of certain marks in use on some goods which it believes would conflict with the use of its marks. . .while not objecting to use of a similar mark on other goods which it does not believe would conflict with its own use.” J. Thomas McCarthy, a world-renowned expert on trademark law, opines that “a program of trademark enforcement should tread a moderate course between lackadaisical and laissez-faire on the one hand, and belligerent and over-bearing on the other hand.” McCarthy, for example, opines that it is not necessary to challenge use of a trademark by artists and sellers of art reproductions in order to keep the mark strong, nor is it necessary to challenge expressive uses of a trademark in connection with entertainment media and political campaigns. McCarthy notes that, particularly in today’s age of social media and Internet access, an overly-aggressive enforcement program can be injurious to the trademark owner in the form of bad press and public relations. In addition, the recipient of an overzealous cease and desist letter may file a lawsuit seeking a declaration of non-infringement in a venue that may be inconvenient to the trademark owner.

At what level to enforce trademark rights is a question to be addressed in consultation with an experienced trademark attorney. While not every unauthorized use of a brand needs to be challenged, certainly unauthorized uses for profit warrant consideration of enforcement. An experienced trademark attorney can assist you in developing a strategy of enforcement based on your goals for the brand, the competition, the budget for enforcement and the level of litigation risk that you are willing to bear.

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