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.  

Old Brands Are Using Twitter and Facebook to Revive Their Brands

                As I explained in a prior blog post, the evolution to a shorter attention span requires trademark owners to change their marketing strategy.  One such trademark owner, Kraft Foods, Inc. has now tried to use Twitter and Facebook to revive its Miracle Whip and Macaroni & Cheese marks.  Such a marketing strategy is not revolutionary by any means.  However, some of their marketing techniques are creative.

                For example, Kraft has encouraged discussions about the virtues of its Miracle Whip in online forums.  It has given out free Macaroni & Cheese via a Twitter contest.  It also plans to air ads for a contest wherein divorcing couples may win money for their split, if their split, is in part the result of their differences over Miracle Whip.  Apparently, Kraft was inspired by Twitter posts about how couples broke up over their differences over Miracle Whip.  Yes, folks, if you did not know, companies monitor Twitter and Facebook posts. 

                Typically, Kraft's ads revolved around moms making lunch for kids or dads demonstrating how to dunk Oreo cookies.   Now, Kraft looks to appeal to the younger generation.  For example, Kraft uses a grandmother in a commercial for its hummus brand (Athenos) who insults a party hostess by claiming she looks like a prostitute.  The same grandmother also insults a co-habitating, unmarried couple by saying that they will be going to hell.  While it appears this grandmother in the ad does not like many things, the ads make clear that the grandmother really likes Athenos brand products.  As a result of these ads, the grandmother now has over 150,000 Facebook friends. 

                These ads appear to be working.  Sales for Kraft's Macaroni and Cheese rose 10% and investors seem more willing to invest in the once-stodgy brand.  Stay tuned, Kraft plans more commercials and contests to increase their brand presence with the younger consumers.