What's in a Name?
In the U.S., protecting your name with a trademark or service mark is an important step, but so is policing your brand to make sure no one is stealing your name and image. Think of a trademark as an alarm system protecting your assets.
Instagram® is dealing with this very issue, as it recently updated its brand-enforcement guidelines. Reportedly, the company updated its terms of service (TOS) and started sending 48-hour notices to apps violating its TOS and using parts of its name in their branding (i.e., “insta” and “gram”).
This wasn't the first time a brand had taken steps to protect its identity.
In 2006, MTV's parent company, Viacom, sent a sternly-worded letter to a U.K. boy upsizing snacks on a site called www.pimpmysnack.com. And in February 2012, the NFL stepped in when Roy Fox applied to trademark "Harbowl" and "Harbaugh Bowl," in the hopes that Jim Harbaugh's San Francisco 49ers and the John Harbaugh's Baltimore Ravens would play each other in the Super Bowl.
In both cases, the infringers backed down, but was this trademark bullying necessary? Unfortunately, the answer isn't that simple.
Failing to routinely monitor and enforce your trademark can diminish or erase its protection. For example, the word "escalator" once belonged to the Houghton Elevator Company, but became a generic term when the company failed to protect it. Likewise, “aspirin” was originally trademarked, but later entered the public domain. In contrast, brands like Kleenex®, Band-Aid®, and Xerox® are regularly policed and defended.
Too often, a big law firm representing a brand sends the same “cease and desist” letter regardless of the infringement. This is the easiest way to deal with potential infringers, as investigating each instance is costly, but when policing your brand or slogan, I suggest taking a measured approach.
Keep some form letters on hand, but be willing to engage those “on the fringe” of your brand. If you sell clothing and another brand starts a bakery, you might say that's OK, but you'll defend your mark should the bakery begin selling clothes. A “live and let live” agreement, which allows companies to keep operating under preset parameters would suffice.
Of course, there are blatant infringers who deserve little mercy. Just know that once you start sending cease and desists, you must be prepared (and willing) to sue. If not, you could lose your trademark.
When I counsel businesses, I tell them to take a stand on how aggressively they'll litigate. I tell them to be reasonable, too, so that when they go after infringers, their argument makes sense on paper. Once you have a plan, stick to it, then re-evaluate at least once every year. An experienced intellectual property attorney specializing in trademark protection can help.
Remember, your brand name is only worth as much as you're willing to protect it. There are ways to do so without being a bully, but don’t be afraid of a fight.
CHAS RAMPENTHAL | Columnist | General Counsel, LegalZoom
Chas Rampenthal is general counsel and vice president of product development at LegalZoom. He's also a former talk radio host (KTLK AM 1150 at Clear Channel) and an entrepreneur himself, as the founder of LegalEndeavor.