Maintaining Trademark Rights:

1. Maintaining Trademark Rights: Policing and Educational Efforts April 7, 2011

2. Discussion Points • Policing Efforts • What is the consequence of failing to police third-party infringers? • Preventing Generic Use • Educational Efforts • Notice to Generic Users

3. Failure to Prosecute Infringers • What are the positions taken by various courts? Evidence Relevant Primarily to Demonstrate Loss of Mark’s Strength Failure to Police Establishes Abandonment Evidence Is Irrelevant In most circuits, you can find language supporting each of these positions.

4. Failure to Police Others is Irrelevant • Rationale: existence of other infringers is irrelevant because wrongdoing of others does not excuse defendant’s infringing activity.

5. Irrelevant Position • However, case law is this area is not clear. • Some say such evidence is completely irrelevant and will not consider it. • Some say it is irrelevant only to abandonment issue. • Note – can find a lot of 9th Cir. and some 7th Cir. case law on point.

6. Failure to Police Shows Abandonment • Keep in mind this is separate from a laches or acquiescence defense. • The “abandonment” cases come in 2 flavors. • Failure to assert the mark resulted in the mark becoming generic. • Failure to assert the mark in face of descriptive use is circumstantial evidence of intent to abandon.

7. Abandonment = Uphill Battle • However, both flavors typically require long period of non-assertion. • Also, burden of proof is not well established for abandonment. • Lack of prosecution may, or may not, have led to widespread usage in a non-trademark way. • Abandonment occurs only when all rights of protection are lost. • Judges are not likely to find abandonment comfortably. • Especially upon a failure to prosecute. • The trademark owner is prosecuting now!

8. Failure to Police Results in Loss of Strength • Rationale: mark has been weakened by widespread use in the market and that use results from failure to assert the mark. • TM owner can prevent market from becoming crowded via an enforcement program. • Must TM owner sue every known infringer? • No • The trademark owner is free to object to uses which present the most substantial conflict, while ignoring others.

9. Reasonable Diligence • Courts acknowledge the expense and business decision involved in bringing suit against an infringer. • Judges have also been clear that suing every infringer would “unnecessarily clutter the courts.” • Therefore, finding a mark abandoned for failure to prosecute some infringing uses would run afoul to these rationales.

10. What is the Most Reasonable Approach? • View failure to prosecute as evidence of possible erosion of a mark’s strength. • Abandonment can be established through acts of omission. • 15 U.S.C. § 1127 • However, such omissions would likely result in mark becoming generic or descriptive in the eyes of the consuming public.

11. What Has the TTAB Said on This Issue? • “There is, to be sure, a line to be drawn between the insufficient defense that opposer may not prevail because it has failed to object to applications for registration of, or the use of, third party marks which are allegedly confusingly similar to the marks in issue and the proper defense —if established —that numerous registrations and uses of marks containing a common element, by a number of different entities, tend to show that no single business owns an exclusive right therein.” • Angelica Corp. v. Collins & Aikman Corp., 192 USPQ 387 (TTAB 1976)

12. Considerations • Do you still plead abandonment defense? • 6th Circuit has noted that abandonment of trade dress rights may be found by failure to prosecute, but acknowledges that such a finding is “unlikely” and available only in “extreme circumstances.” • Herman Miller, 60 USPQ2d 1633 (6th Cir. 2001) • If you do plead, be careful in jury instructions. • Error to instruct jury to find abandonment if found that plaintiff knowingly tolerated others’ use of the mark.

13. Considerations • Potentially look for forums which take the “irrelevant” approach. See 9th Cir. • But be careful, can likely find language to the contrary. • Will assertions of failure to police increase as it becomes easier to identify infringing uses on the internet? • Preliminary Injunctions • Failure to enforce mark or trade dress for a long period of time may undercut assertion of irreparable harm.

14. Preventing Generic Use • Police the mark!! • Use, or come up with, the generic name of product being sold with the mark. • Styrofoam • Prevent generic use in media, dictionaries. • Letters of Protest (PTO). • Engage in educational advertising. • See examples • Remember: once the term has become generic, it has entered the public domain and enforcement efforts asserting trademark rights is too late.

15. References • For further information, please see McCarthy on Trademarks, § 17.17 (Thomson Reuters/West, Rel. 55, Sept. 2010).