When conducting trademark clearance searches and considering the extent to which brands should be protected, trademark owners are well advised to consider whether the mark in question is registered and/or being used by third parties in connection with goods and services that may not be readily apparent.
Who would have thought, for example, that a world renowned athletic shoe and apparel company would expand its stable of products to include, of all things – – bacon! As reported by Fox News, Reebok has done exactly this and has now offered “REEBOK BACON” in connection with its sponsorship of the 2014 CrossFit Games in California. “REEBOK BACON” was distributed to athletes and fans at the CrossFit Games, and CrossFit Box food trucks are now distributing the product in various locations in Los Angeles.
CrossFit workouts encompass a wide variety of exercises that are often done as quickly as possible or within a certain time frame. CrossFit athletes are known to follow a Paleolithic diet, which is high in protein and avoids such items as grains, dairy and sugars. “REEBOK BACON” is free from all nitrates, preservatives, MSG and sweeteners, and is smoked instead of cured, in accordance with the CrossFit code.
Reebok is undoubtedly a famous brand that is used in connection with a wide array of products. Yet most will probably be surprised to find “REEBOK BACON” in the marketplace.
While it is unclear at this point whether this is merely a clever publicity campaign or whether Reebok truly intends to offer this new product to the public, the foregoing illustrates that brand owners, when conducting trademark searches to clear prospective marks, should be cognizant of the extent to which third parties have registered and/or are using similar marks for goods and services that would not be readily apparent. In addition, while the inclination is often to search only the specific goods that will be offered by the trademark owner, a comprehensive search may uncover third party uses on goods that are not directly related but nevertheless may be problematic.
Trademark owners should also consider protecting their trademarks outside of the specific International Class in which their current goods fall. Such protection may take the form not only of intent-to-use trademark applications, but also enforcement efforts designed to prevent third parties from using the owner’s mark on goods that are not directly related to the owner’s goods, but that may nevertheless cause confusion as to source amongst consumers. These enforcement efforts may include trademark monitoring, cease and desist letters, opposition and cancellation proceedings and/or litigation.
By taking the above steps, trademark owners can help ensure that they are not unpleasantly surprised by unexpected third party uses of trademarks in the marketplace.
