When is it Just Not Worth the Trademark Fight?

Well intentioned trademark enforcement efforts can sometimes cause unintended collateral damage.  Even a victorious trademark fight can be accompanied by a PR nightmare. In some cases, the PR problems can cost more than a legal battle. Brand defense is a noble effort, but not if the PR damage is too great.

Take Vail Resorts’ trademark application for the words ‘Park City’, an iconic ski community.  The application resulted in outrage by the town and a costly trademark fight. After a rally of angry community members and a lot of bad press, Vail Resorts ended up withdrawing their application.

trademark-fightIn addition to bad PR, there could be significantly more financial costs to the client when it comes to a big trademark fight. For instance, bad PR could require the hiring of a PR firm to squash and spin the press. It could also end up being a long and expensive legal battle.

The Washington Redskins case was not a case of enforcement gone overboard, but it is still a prime example of how tangled and expensive a protracted trademark fight can be.  The team has been in trademark litigation since 2013 when they were asked to change their name due to its disparaging reference to Native Americans. Three years later, they’ve appealed their way to the Supreme Court and are still fighting the battle.

The Redskins have plenty of resources to continue a trademark fight of this magnitude, but does your client? There’s a fair amount to consider when it comes to defending a mark.

Here are some things to consider and discuss before starting or continuing a trademark battle.

  1. Is your trademark strategy too broad?  Remember that unless there is a real probability of consumer confusion, trademark law will not ultimately support your demand.
  2. Are you trying to capitalize on a colloquial or local term in a way that will upset the community in which your business resides?
  3. Are you trying to squash a little guy who may have made a mistake or is unaware of how their mark could be confusing?
  4. Is there a less aggressive means for your request of the other party? For example, a less formal email or a phone call.  Keep in mind that cease and desist letters are very often posted online by the recipients, inviting and inciting criticism from far and wide.

While it’s of utmost importance to ensure that your client’s trademarks are protected, it’s also important to know the risks involved in pursing a legal battle. If there’s cause to send a cease and desist, you should always assume your letter will become public and could create some backlash. Careful consideration should be made about your next steps, and strategies in place to prevent or manage collateral damage.

Vaping Trademarks : How Much Juice Remains?

If you’ve ever been walking across a parking lot and wondered “what the heck smells like marshmallows?” then you have noticed the rise of the e-cigarette or “vaping” trend. Like we did with craft beer a few months back, we decided to look into USPTO applications for vaping trademarks as an indicator of growth in the industry.

Using Name Warden’s USPTO data in goods and services, we searched applications for vaping trademarks containing any of the following key words or their plurals: vape, vaping, electronic cigarette, liquid nicotine, eliquid, and cartomizer.

Here’s what we found.

Vaping filings per year

In 1993 there were a mere two applications for vaping products. Compare that to the 3,404 in 2014. Just looking at the filing trends, it’s clear when the industry really took off. We went from 649 in 2012 to 2,404 in 2013. Business was clearly booming from 2013-2014 – with almost 4 times the filing applications for vaping products. You can also see that there has been a decline in the last couple years, suggesting slowing growth in the industry after the huge growth a few years ago.

With 2016 projected to have 2,376 filings, trends in vaping trademarks show that the vaping industry continues to add brands and products, but at a slower rate than a few years ago.

Monkey Selfies, Anchor Babies, Left Sharks: Chasing Headlines with Meme Trademarks

The year isn’t over yet, but it looks like 2015 could go down in history as the year that trademark applications jumped the left shark. We have seen a number of amusing and some unfortunate examples of applications filed with the USPTO to register meme trademarks and brand pop culture. Here are just a few. […]

USPTO: Some Trademark Registrations Can Be Updated

If your company has moved from selling physical media but now sells downloads or streaming services, you have an unusual and very helpful opportunity for your previous trademark registration.  The U.S. Patent and Trademark Office has a new program to extend trademark protection to your new products.

Fifty Years of Beer Trademarks Filing Trends

Here at Name Warden, we work with trademarks, and we like beer.  Lately we have seen a lot of beer companies feuding over trademark rights.  For example, Magic Hat v Georgetown Brewing, Lagunitas v Sierra Nevada, Bell’s v Innovation Brewing, and on and on.

Soda Pop, Chocolate, and Product Configuration Trademarks

In our last post, we looked a colors of products or packaging as potential trademarks that can be protected for certain brands.  This time, let’s consider products themselves.  Not the packaging of the products or the colors used in advertising, but the things themselves.  When can the shape of the thing carry trademark rights for its sellers, […]

When a Color Scheme Becomes a Color Trademark

A brand name, a logo, a tagline.  These are the traditional trademarks we are all used to.  But what about the non-traditional ones that might come up only a handful of times in the course of a career prosecuting trademark applications?

Are You Ready for Some Football Trademarks?

It’s only mid-August, but the Back-to-School ads are everywhere, which can only mean that football season is also upon us. Here at Name Warden, we see everything through a trademark-related lens, and it’s been a busy summer for football trademarks.

Apple files to register “MUSIC” trademarks

Apple has filed with the USPTO to register MUSIC with Apple’s familiar bitten-apple-outline logo as a trademark for software, broadcasting and telecommunications services, social networking, and entertainment.  The gist of the filings and international trademark classes for five trademark applications by Apple are listed here.

Google files trademarks for authentication cards and gesture-tech

We have a few new and interesting USPTO trademark filings by Google, one to brand physical memory cards for use in authentication, where the name is PROJECT VAULT, and the other is for a squiggly logo for use with what sounds like a Minority Report-style gesture capturing technology.