For any business owner, the potential costs associated with a trademark dispute battle can be extremely high. For some startups, the idea of entering into a legal fight over the right to use a mark is simply out of the question due to limited resources.
There’s a new trend on the rise that is changing the way startup business owners and entrepreneurs fight claims of trademark infringement. According to an article in the Wall Street Journal, “a growing number of business owners have begun fighting back using a tactic lawyers describe as “shaming,” or exposing what they view as baseless trademark infringement threats on the Web or through social-networking websites such as Facebook and Twitter.”
As more people connect with businesses and brands online, social media sites like Facebook, Twitter, and YouTube are becoming increasingly effective communication and brand loyalty-building tools for business owners. For startup business owners who might not yet have enough capital flowing in to hire expensive communication representatives or firms to help get the word out about timely news relating to their business, the internet is a great alternative public relations tool available for use.
Examples of Small Business Owners Using The Strategy
According to the article in the Wall Street Journal, more and more small businesses and startups are using the Internet to stand up to bigger companies that make claims about alleged trademark infringement. Phil Michaelson, creator of KeepRecipes.com, is one of the startup business owners highlighted in the Wall Street Journal article. Instead of complying with a cease-and-desist letter sent from AdKeeper Inc., a New York-based service that allows users to save, or “keep,” online ads, Michaelson decided to post the cease-and-desist letter online to deter the company from following through with any legal action. In the letter, AdKeeper Inc. claimed that Michaelson’s use of “K,” “Keep,” and his website’s name, KeepRecipes.com all infringed on the trademark they owned.
Another similar case outlined in the article involved a T-shirt maker named Bo Muller-Moore, and restaurant chain giant Chick-fil-A. According to the article, Mr. Muller-Moore received a cease-and-desist letter from Chick-fil-A after attempting to register for the slogan “Eat More Kale.”
The fact that Chick-fil-A sent the letter alleging trademark infringement is not surprising. The company currently owns and uses the slogan “Eat More Chikin” in marketing and advertising campaigns. The slogans do sound and look similar, which could potentially confuse consumers. As mentioned in our previous trademark infringement case study articles, this “likelihood of confusion” argument is the central focus of any trademark infringement claim.
After receiving the letter from the restaurant chain, Mr. Muller-Moore created a Facebook page to raise awareness about the matter, launched an online petition for supporters to sign, and even added a “donate” link to his website to raise money for potential legal costs.
Has The Strategy Worked?
After he posted the cease-and-desist letter to the website Chillingeffects.org, Phil Michaelson, creator of KeepRecipes.com, was contacted by a number of lawyers who, after seeing the letter, offered to represent him free of charge in the dispute. According to the Wall Street Journal article, no court case has been filed yet.
T-shirt maker Bo Muller-Moore has received thousands of signatures from people who support his desire to continue using the “Eat More Kale” slogan. He also has raised over $10,000 to defend himself. According to the article, Chik-fil-A has not yet sued Mr. Muller-Moore for the alleged infringement.
The jury is still out as to whether the strategy is an effective way for small startups to fight trademark infringement claims from bigger companies. Some trademark experts claim that using the strategy can force bigger companies to back down from fights in order to avoid looking like “a bully” and losing customers as a result.
Other experts aren’t convinced that the new strategy will stop large corporations from fighting to protect their trademarks. They make the argument that active enforcement is an essential part of maintaining their trademark rights, and that companies should continue to constantly monitor for potential cases of trademark infringement—even if potential infringers are flocking to social media and trying to make them look like bullies.
Although this strategy may work for some startup business owners, the best way to avoid having to enter into a costly trademark infringement battle is to make sure you pick a name, logo or slogan for your business that you actually have the right to use. It’s important to do your research before using a name or slogan for any marketing material, advertising campaigns, or products for your business.
If you are starting a business and you have a name or slogan in mind that you would like to use, it is highly recommended that you have a licensed trademark attorney conduct a comprehensive trademark search for you.
Once you have determined that your mark is available for use, take steps to file a trademark application with the United States Patent and Trademark Office (USPTO). Trademark law in general protects a trademark owner’s commercial identity (goodwill, reputation, and investment in advertising) by giving the trademark owner the exclusive right to use the trademark on the type of goods or services associated with the mark.