One of the things about being a brand owner is that you have to play hard ball sometimes, or at least that’s what most prudent trademark lawyers would advise. But you can cross the line, especially when the enforcement action you are taking is aimed at the wrong target.

Straight out of the book of Tales of Trademark Bullies is another case of a brand owner throwing its weight around and quashing all potential threats like Styrofoam cups (yes, Styrofoam is indeed a registered trademark). FlipKart, an e-commerce company from India that operates an online megastore selling everything from baby bibs to barbeque grills, has made quite a name for itself since launching in 2007. It is peddling itself as an alternative to Amazon, at least outside the U.S. But Amazon is still king in India, apparently. 

Regardless, a company with a name like FlipKart is probably going to defend it pretty vigorously, and have a lot of success to boot. Not many everyday Joe’s are going to challenge a company’s claims when their attorneys come knocking. Much like SnapChat, FlipKart is one of those stronger marks, you know, the ones that are distinctive because they do not describe the goods or designate a category of products. From the beginning, the idea was to have a catchy name suggestive of the features of the service with staying power in the minds of consumers. Of course, being able to register the name under the .com TLD was key, too!

Picture this. You are the owner of an up-and-coming marketing agency. You recently wrapped up a design and identity project for one of the city’s fastest growing tech start-ups, DigiBerry. The company makes digital pastries that people can share across social networks as part of messages or shared content (don’t ask me why it’s cool, it just is!). As part of the project, you created a series of icons, fanciful pastry designs, a website, print collateral, and a series of short animated videos that users of DigiBerry’s app can send to acquaintances within their social network. DigiBerry LOVED it. The local design scene LOVED it. In fact, they asked you if they could feature the design in next month’s Marketing Greatness magazine. Flattered, you accept the invitation and submit copies of the logos you created for DigiBerry and images from some of the designs. Feeling like you’re on cloud 9, you decide to feature DigiBerry on your website and in a “featured work” brochure that you are preparing for the annual national marketing conference in New York.

All is going great. Then on the eve of the big story release in Marketing Greatness and your appearance at the conference, you get that dreaded white legal-sized envelope that most business owners have nightmares about: the cease and desist letter from the law firm of Ware Biggar Zhan Yu. Client has hired the firm and is accusing you of trademark infringement, unfair competition, and copyright infringement. They demand that you remove all logos from your website and destroy any materials that include client’s logos, name, or the designs you prepared for them. Having already prepared the materials, what are you to do?

It seems like I have been getting a lot of questions (or hypotheticals) lately that involve pointing the finger at someone else. When I point the finger, I don’t mean in a whistleblower type of way but as in the type of finger-pointing that goes on when we are teenagers: “Johnny was out with his girlfriend until midnight. If he can do it, why can’t I?!”. These types of questions don’t begin with the premise that what you are doing may not be right and they are usually designed to uncover the mystery of another person’s tactics. You know the response that I got when I asked this question? “Son, you aren’t them.  If they were our son, they aren’t living by our rules.”

What is remarkable is this same type defense often arises when people talk about trademarks. The defense is usually brought up by a would-be infringer as a way to distract from the real issue (which is that they are infringing in the first place).  The line usually goes something like this:

I see so many other people misusing a trademark in the media and they aren’t called-out by ABC company. If they are getting away with it, I should be able to get away with it, too.
This defense is about as effective as explaining away highway speeding by pointing at other people passing you by at 85 while a cop is writing you a ticket for going 75. The fact is some trademark owners have a lot of ground to cover.

Do you see what I did there?
Trademarks on government insignia. The third and final installment where we discuss the all-important topic of whether government bodies can prevent citizens from using official government insignia on t-shirts and other novelty items. In the last post I left off with the question of whether the government should be allowed to prevent the use of official insignia by a person in the form of a parody. After all, if the government has an interest in preventing the general public from becoming confused as to the affiliation between a parodist and the government agency that this person is parodying, shouldn’t the government be allowed to bring down the hammer? 

Deeper questions on the extent of overlap between use of government symbols vs. use of commercial symbols are more easily answered by remembering that the dominant goal of trademark law is preventing consumer confusion as to source. In the private sector, if confusion about a trademark is likely to result in harm to the consumer from a counterfeit product, stopping others from using the trademark is hugely important. But in the private sector, a trademark owner does not have the unmitigated right to prevent all uses of their trademarks by others, particularly where no confusion is likely and there are greater interests at stake. These greater interests often originate in the interest of competition. Another greater interest is also found in freedom of expression. Trademark law knows these greater interests collectively as the “fair use” defense.

I hope you have all purchased your t-shirts with the government insignia of your choice adorning the chest portion. (I have my own shirt on order, but I won’t say what parodied emblem I ordered because this blog isn’t about that sort of thing, political discussions and the like). This blog is about far more interesting (but no less controversial) stuff like whether the government has the power to restrict certain expression that involves the use by one party of a third-party’s trademark. The owner of a Zazzle.com merchant webpage, a website where most of the insignia-bearing items are sold, has sued the Justice Department over a take-down notices that Justice sent to McCall. The claim is that Justice’s actions violate First Amendment rights because the attempt to stop the use of the DHS and NSA official seals is abridging free speech rights, namely the right to parody government logos (yes Virginia, parody is a form of criticism). One house-keeping, tone-setting note: this blog post is going to introduce the idea of using trademarks in parodies and why this particular kind of use can be protected as free expression. 

As you may remember from the previous post, we left off with the rumination on whether the government could restrict all uses of government insignia, whether for commercial or political purposes. Some agencies appear to allow some use of their insignia to be used on t-shirts and other items. NASA is one notable example, and this fact is evidenced by all the NASA-related insignia you find on websites and in stores like Target. Other governmental bodies (like the State of Nebraska) seem to limit most commercial and political uses of the state seal or any deceptively similar images. The rationale behind such restrictions (at least from the standpoint of the government) is that commercial use of the insignia is likely to confuse consumers in the marketplace as to the affiliation between a governmental body and the maker of the t-shirts.