Don’t become a trade mark bully


Mike Boudett, Dave Kluft and Anthony Rufo discuss how modern and social media are forcing brand owners to walk a fine line between aggressive brand enforcer and so-called trade mark bully

Abrand owner has the affirmative duty to enforce its trade mark rights. Failure to do so can result in the loss of a valuable asset. Observe the cautionary tale of Bell South v DataNational, in which the Federal Circuit found that the brand owner lost its exclusive right to the Walking Fingers logo for telephone directories, in part, because it failed to police the use of the logo by other companies (Federal Circuit, 1995). In the past, brand owners have sought to avoid similar results by alleging trade mark infringement in cease-and-desist letters to competitors or to potential competitors. Such correspondence has often followed a David versus Goliath formula, but without the slingshot: smaller entities in receipt of such letters had a difficult choice. On the one hand, they were faced with the possibility of giving in quickly to potentially unreasonable demands, and on the other, risking expensive litigation against...



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