Aggressive Trademark Policing Can Expand Your Protection and is Like Winning the "Super Bowl"

A while ago, a friend of a friend asked me for some advice regarding a cease and desist letter their organization received from the owner of the trademark "Iron Man" (World Triathlon Organization).  Their organization held team races which used the term "Iron Man" descriptively (i.e. to denote that the race would not include any substitutions, so that each person on the team had to "iron man" the race).  Not surprisingly, when I looked into this matter, it was easy to see that the trademark owner was using its superior resources (it is a big company) and stable of high-paid attorneys to shut down anyone from using the term whether it was in a trademark sense or not. The trademark owner went after every person/entity trying to use the term for their goods or services despite the goods and services having no relation to those promoted by WTO.  In one instance, WTO challenged the use of "Iron Man" in association with scientific measuring instruments causing the registrant to abandon its application.  Not sure how measuring instruments can be confused with triathlon-related activities, but clearly WTO does not want anyone to use "Iron Man."

My advice to this small organization was to just give up using the term because litigation would financially ruin the organization and there was no doubt that World Triathlon Organization ("WTO") had the resources to see the litigation out to its conclusion.  While legally, there was a strong argument that the small organization was not doing anything wrong, testing that theory would undoubtedly take years and hundreds of thousands of dollars in litigation costs.
 
Remember, trademarks are supposed to identify source and not confuse consumers, but not to take words or phrases out of the lexicon.  That is to say, a person should be able to use a term to describe a product even if the term is the trademark of another (e.g. I am wearing Nike shoes).  As long as the person or entity is not inferring that it is a sponsor or affiliate of the trademark owner, then from a strictly legal sense that should be okay.

Unfortunately, some companies, like the owner of "Iron Man" aggressively fire off cease and desist letters, oppose trademark registrations, or file lawsuits to those using their trademarked name legitimately.  The most recent example of this is the NFL's aggressiveness in not allowing those not authorized by the NFL to use the term "Super Bowl."  Look at the advertisements from companies not from "official sponsors" of the event, they will advertise deals for the "big game" or "super" savings, but will not use the term "Super Bowl."  That is because the NFL polices any such use and has the means to drive many of the smaller entities out of business with litigation, or make life miserable for the bigger companies who'd rather spend their money on promotions or building their business and not litigation.

As a trademark attorney, I advocate strongly for my clients to ensure that their rights are protected.  But, on the other side sometimes legality should give way to reality so that my clients can continue to grow their businesses.  

Update on Chinese Apple Store Counterfeiters

            Well, apparently, Apple was able to convince the government to shut down several of the counterfeit stores in China.  As I mentioned in my earlier post, the counterfeiters were very thorough--they even copied the employees' uniforms and name badges.  That is detail-oriented at its finest!  In the city of Kunming (southwest), there were around 24 fake stores.  Incredible.  What is even more incredible is that a company like Apple waited until 2008 to put together an anti-counterfeiting team and plan.  Apple did not even register its trademarks in China until this new anti-counterfeiting team was put together. 

            China, which manufactures many (if not most) of Apple's products, produces enough fake Apple products to supply the entire world.  China is also one of the biggest markets for Apple's products.  Given this rampant counterfeiting, it is incredible that Apple would wait so long to protect their rights and try to stem the tide of fake products and stores in China.  Remember, this is the same Apple company that has relentlessly pursued Samsung over its tablet patents all over the world. 

            It simply does not make sense for a company like Apple or one which has products made in China (a known piracy and counterfeiting hub) to take precautions to protect its brand or intellectual property.  A glutton of poorly made knock-offs could irreparably harm a company's reputation.  Even a small business should look to protect its intellectual property at home.  You don't have to be a huge, multinational corporation before you start thinking about protecting your property. As part of any business plan, you should think about any potential intellectual property rights which your business may own or develop and devise a plan to protect that property.  You should regularly revisit and revise the plan as your business grows or changes.