If you look back at Facebook’s track record for protecting its trademark, some might say the social media giant goes overboard. As Dow Jones Business News (DJBN) recently reported, Facebook takes an aggressive approach against companies potentially infringing on its mark, and has raised more than 100 objections with the U.S. Patent and Trademark Office so far.

According to DJBN, Facebook objects to companies choosing names such as Designbook, Teachbook, Faceplay, and Facewerk, which use either “book” or “face” in their brand names. While the big guy going after the little guy may seem liketrademark bullying, Facebook and other big brands have a responsibility to police their brands. If they fail to do so, they risk diluting their marks and even losing rights in their marks.

Trademark Bullying, Brand Management or Both?

These cases can also turn into a PR challenge. It can be perceived as TM bullying when a small mom and pop shop gets a cease and desist letter from a the owner of a big, famous brand. However, on the other side of the coin, if big brand owners let too many problematic uses of a mark go unchecked, the reputation of the brand could be damaged and that may cause a financial impact.

There is a fine line that famous brand owners like Facebook need to walk. In protecting famous marks, there has to be careful consideration given as to how these David and Goliath legal actions are going to be perceived by the company’s customer base, because it can backfire.

If the Little Guy Prevails Does the Big Guy’s Reputation Suffer?

When Chick-fil-A® spent three years trying to stop a small T-shirt company, Eat More Kale, LLC, from using the phrase “Eat More Kale” on its shirts, because it alleged it was confusingly similar to Chick-fil-A’s trademarked “Eat More Chikin” slogan, the little guy prevailed. The small Vermont-based company sold thousands of T-shirts due to publicity from the case, while Chick-fil-A’s reputation may have suffered and the company was likely perceived as trademark bullying to some.

Also in the fast food realm, McDonalds appears to take a no-tolerance policy on others using the “Mc” portion of its name, objecting to any mark that contains “Mc.” For example, it has objected to SCRABMLERS MC CLUB, MCFIT, and MACFLOWERS among others. When companies like McDonald’s and Chick-fil-a have made such massive investment in their intellectual property, they have a lot to lose if they allow third parties to encroach on their territory. Enforcement tactics like this are sometimes necessary to ensure the value of the mark remains strong both for shareholders, as well as the public, even if some may consider it trademark bullying.

Some Companies Take a Softer Approach to Potential Infringers

When Coca-Cola® discovered some of its loyal customers had created a Facebook fan page devoted to the brand, the company worked with the page owners instead of against them. By providing content for the page and allowing the page owners to continue administering the page, the brand didn’t offend fans. It embraced them.

Coca-Cola and others chose to take control of its brand on social media in a positive way, and that’s a consideration brand owners (big and small) should factor into their intellectual property and trademark enforcement strategy. Keep in mind however; when a third party crosses the line, these nice guys will take action too. Coca-Cola takes a hard line in certain instances, such as when its mark is used in a domain name. In the case of the site vintagecocacola.com, where a group of seniors started the site to display their collections of vintage Coca-Cola merchandise, Coca-Cola requested the owner of the site cease use of the domain and transfer it to Coca-Cola immediately. In that instance, a representative of Coca-Cola stated that it was not the content that they objected to, but the use of the mark in the domain name that they could not allow to continue.

Companies Should Seek Legal Advice Before Committing to a Mark

So how can YOU avoid getting in trouble with big brands like Facebook, McDonalds, Starbucks and Chick-fil-A? Hire an experienced trademark attorney to guide you. He or she can help you:

1. Consider unique and distinctive marks

First things first. When choosing a mark, it should be unique and distinctive. If a company is starting from scratch, it has the ability to choose a mark or phrase that fits this criterion. Choosing a distinctive mark can prevent problems down the road, and is less likely to run into issues with third parties. Distinctive marks are also easier to enforce. Weak and descriptive marks, such as those that merely describe or suggest a company’s product or service, while still capable of protection, are more challenging for businesses to maintain and enforce in many instances.

2. Conduct a clearance search

Once a mark is chosen, an intellectual property attorney can perform a search to address potential concerns with use and/or registration of a mark. To identify potential risks, these searches should include the following:

• Trademarks registered or pending on the state and federal level;

• Search engines for common law use;

• Domain names;

• Social media handles and page names;

• Business names;

3. Analyze brand owners’ trademark enforcement history

Often times, preliminary search results will lead us to look into a brand owner’s enforcement history. If a client could potentially face off with a brand that has reputation as being more aggressive, we take that into consideration when recommending whether a client should move forward with a mark. If a brand owner has been aggressive in filing lawsuits, opposing third parties, or engaged in trademark bullying, it could be a higher risk for the client and a deterrent to filing the mark.

4. Other strategies to avoid potential issues

Some trademark disputes can be avoided by tailoring the description of goods or services. When filing a trademark application with the United States Patent and Trademark Office a description can be broad (i.e., clothing, namely shirts and shorts), or it can be narrowed to specifically state the product or service (i.e., athletic clothing, specifically compression shorts for running). Typically, an applicant should be as broad as possible when describing its good or service, but if third party mark is potentially an issue, it may be helpful to eliminate potential conflict by narrowing the description to something more specific to your goods or services.

Protect Your Trademarks and Other Intellectual Property Rights

Whether you’re an established brand or preparing to launch a startup, how you approach registering marks and trademark protection associated with your business can impact your company. Turning to an experienced intellectual property lawyer for advice and consideration of potential issues and options for protection of your mark may be a well-worth initial investment.

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About the Firm:

Klemchuk LLP is a litigation, intellectual property, transactional, and international business law firm dedicated to protecting innovation. The firm provides tailored legal solutions to industries including software, technology, retail, real estate, consumer goods, ecommerce, telecommunications, restaurant, energy, media, and professional services. The firm focuses on serving mid-market companies seeking long-term, value-added relationships with a law firm. Learn more about experiencing law practiced differently and our local counsel practice.

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