The Fine Line Between Trademark Policing and Bullying

By: Donna Ray Berkelhammer. This was posted Tuesday, May 31st, 2011

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The trademark geeks lawyers at Sands Anderson have been debating how far a company should go to “police” its trademarks.  Entrepreneur Media  (publisher of Entrepreneur magazine and owner of got us thinking about it:  in attempts to protect its Entrepreneur brand, it sent cease and desist letters to for workshops, EntrepreneurPR, a firm that had a newsletter called Entrepreneur Illustrated, and 3Entrepreneurs, which  sold T-shirts, sweaters and hats with the phrase “Entrepreneur Generation”.

While it is never too soon to protect your company’s valuable trademark, registration alone is not enough. The owner of a trademark has to stop people from infringing its marks, known as policing the mark. 

It is a difficult line to walk. If you don’t police, you could be deemed to have abandoned your mark or have allowed infringing uses to go unchecked.  Too much (or inappropriate) policing can make your company look like a bully and generate bad PR. 

It is important to remember that a trademark registration protects the use of the brand name in connection with the goods and services provided in the registration only.  So if your registration is for ENTREPRENEUR.COM for “downloadable podcasts in the field of business, current events, lifestyle issues, and developments in science and technology”, is a Tshirt with “ENTREPRENEUR GENERATION” on it likely to cause confusion with your service?  Entrepreneur Media thought this was justified, because it had produced clothing with its “entrepreneur” logo.

The first step in policing is to find other people who are using your mark or something substantially similar that is likely to cause confusion in the marketplace. This can be done through search engine alert services or by hiring “watch” companies. Then you need to send a cease and desist letter, demading that the infringing use stop.  After that, there are a number of ways to maintain control of the mark from liecensing  the use to seizing and destroying infringing material. 

In addition to policing, maintaining a trademark after registration also includes making occasional post-registration filings. 

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  • John,
    How is EMI’s attempt to stop all uses of Entrepreneur, such as against Tshirts, really different than Monster Cable trying to stop all uses of Monster in unrelated goods and services? Is there a distinction in your mind because “Monster” in connection with audio cables is an arbitrary mark, and “Entrepreneur” in connection with anything but the magazine is arguably merely descriptive?

    Posted by: Donna Ray Chmura | June 7th, 2011 at 8:14 am
  • Although the topic of trademark bullying is popular your geeks have chosen a poor example to demonstrate the problem. A casual review of the tortured history of the so called trademark ENTREPENEUR makes it clear that but for the happy accident of a shockingly poor trademark decision the owners of the mark ENTREPENEUR would have been forced to accept what is painfully obvious- that the term entrepeneur is free for all to use for ANY purpose- with the possible exception of use as the title for a magazine, As has been widely noted, the folks at EMI are often in the strange position of fighting with their own audience. It is only a matter of time before they lose their trademark rights. Their bullying tactics are simply meant to postpone that day of reckoning.

    By contrast, the folks at Monster Cable appear to be classic trademark bullies. They own a perfecly acceptable trademark MONSTER, for a line of audio cables and related equipment. But they have chosen to assert rights against the world in the term MONSTER. Most recently, they were humiliated into settling with the owners of a mini golf course that used the term MONSTER. No possible connection to their commercial world- now that’s bullying.

    Posted by: john troll | June 2nd, 2011 at 5:13 am

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