Trademarks

Missing The Forest For The Trees: Some Considerations For Your Trademark Protection Strategy

Trademark protection requires a trademark owner to weigh a number of competing factors, and developing and executing a trademark protection strategy should always involve a qualified trademark practitioner from the get-go.

By  
on

Being a trademark owner is not something that can be taken for granted, especially when it comes to obtaining and maintaining trademark rights. Trademark law requires that a trademark owner take steps to protect their trademark — if not done, the trademark owner risks losing some (or all) of their trademark rights. It’s no surprise that protecting a brand that an individual or company has worked hard to establish in the minds of the consuming public requires developing a policing strategy and a commitment to implementing that strategy. What may be surprising is those who have yet to establish their brand need to think about such things as well.

Recently, hip hop artist, actor and author LL Cool J (real name James Todd Smith, to the uninitiated) filed a trademark infringement lawsuit in the U.S. District Court for the Central District of California against Guerilla Union, Inc. over domain names they own that incorporate the phrase “Rock the Bells” in the secondary level domain — a phrase that is title of his 1985 hit song and for which he now seeking federal trademark protection. Aside from his new Sirius FM station “Rock the Bells Radio” and other entertainment services, he is also seeking federal trademark registration for “Rock the Bells” involving other products and services, such as clothing, printed goods and even computer flash drives, to name a few. What is interesting is that he filed for federal trademark protection for this phrase in 2017, many years after the defendant Guerilla Union had successfully registered the trademark for goods and services for which he now seeks registration. To overcome the likelihood of confusion presented by these registrations to his federal trademark applications, he successfully filed for cancellation of these existing registrations held by the defendant Guerrilla Union (claiming abandonment and fraud on the USPTO based on a lack of continued use of the mark when the registrant renewed the application). Since the defendant defaulted in responding to the cancellation complaint, it will be interesting to see if they respond to his federal court complaint.

I am intentionally leaving out a lot of other facts here because the focus this column is not on LL Cool J’s likelihood of success on the merits. Instead, the situation got me thinking about trademark protection in general and the importance of when you need to start thinking about it as opposed to how you do so. Clearly, LL Cool J is recognized for his hit song, but there is no evidence of his using the “Rock the Bells” phrase as a trademark after it was released. Once he decided to begin using the phrase as a trademark years later, however, he seems to have initiated federal trademark applications (11 in all, to date) and aggressively moved to obtain and protect those rights (such as seeking cancellation of the registrations cited against his pending applications, as well as now seeking to obtain the domain names currently held by Guerrilla Union but apparently not being used). Not every person or entity seeking federal trademark registration has the resources to move so aggressively, but it demonstrates a strategy rather than spur-of-the-moment action.

Although many practitioners regularly focus on the “how” when it comes to trademark protection, the “when” is equally important. Here are some things that every person or entity interested in trademarks should consider regarding their trademark protection strategy:

Address Trademark Protection Strategy Before You Use The Mark.  It may seem obvious, but this point cannot be stressed enough. Screening and clearing a trademark before using (or registering) it is one thing, but you need to think about the long game from the outset. It is easy to focus on immediate impediments to use and registration (and getting around them) and ignore the long term impact of use and policing of the mark. Getting a mark registered is one thing, but being able to properly police it long term is another.

It’s Not Just a Matter of “How,” But “When.” Planning on how to handle impediments to registration and potential infringers is one thing, but when to take action is another. In LL Cool J’s case, he seems to have moved quickly (and aggressively). In many cases, however, trademark owners either unreasonably delay, or worse, ignore the threat and fail to take action. Of course, there are times when delay is reasonable and/or passive action makes sense (such as a watchlist), but the point here is that trademark protection strategies should always combine the “when” to take action with the “how” to take action.

Sometimes Too Much is Simply Too Much. There are times when strong and aggressive action is necessary to protect a trademark, and there are times when such action may not only be overkill, but counterproductive. Remember: You need to think about the long game. I have previously written about policing trademarks in this age of digital media, but it bears mentioning again here — not every action taken against someone using a confusingly similar trademark deserves draconian action. In many cases, a lighter hand may prove successful (and cost effective). Like my mother always says, you get more bees with honey than with vinegar.

Sponsored

Of course, the above considerations are not comprehensive, but important food for thought.  Trademark protection requires a trademark owner to weigh a number of competing factors, and developing and executing a trademark protection strategy should always involve a qualified trademark practitioner from the get-go. When it comes to trademarks, don’t miss the forest for the trees — your trademark portfolio absolutely depends on it.

Tom Kulik is an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, LLP. In private practice for over 20 years, Tom is a sought-after technology lawyer who uses his industry experience as a former computer systems engineer to creatively counsel and help his clients navigate the complexities of law and technology in their business. News outlets reach out to Tom for his insight, and he has been quoted by national media organizations. Get in touch with Tom on Twitter (@LegalIntangibls) or Facebook (www.facebook.com/technologylawyer), or contact him directly at [email protected].

Sponsored

Topics

, ,