Don’t Get “Crushed”: Three Ways to Avoid Being a Bully While Protecting Your Trademarks

more+
less-
more+
less-

Protecting a trademark can often create as many new problems for a brand owner as it solves, if not handled properly.

Recently, King.com, owner of the popular game app Candy Crush Saga, received an avalanche of negative PR over the aggressive tactics it has used to protect its trademarks. The company reportedly sent numerous threatening cease-and-desist letters to smaller game developers that use the terms “candy” and “saga” in connection with their games. This sets up a common “David versus Goliath” scenario that we have seen many times in recent years, including when a Starbucks cease-and-desist letter to a small Missouri brewpub over the pub's use of the term “Frappuccino” went viral.

The problem brand owners face is that U.S. trademark law requires a trademark owner to police its trademarks or risk losing the mark. This duty to police your trademarks extends not only to identical marks, but to any marks that could be considered confusingly similar. So how do you protect your brand without being branded a trademark bully?

1.  Choose your battles wisely and don’t overreach.  Distinguish between those marks that actually infringe your mark and those that are only tangentially connected. 

2.  Don’t be overzealous.  Small, localized businesses that do not compete with you should be addressed with a softer touch, which can be accomplished by sending a “nice” cease-and-desist letter explaining why trademark law requires that you contact them. 

3.  Choose your words carefully.  Don’t put anything in a cease-and-desist letter that you would not want the whole world to see because it can easily be posted on the web.

At the end of the day, it’s a balancing act - one that King.com, appears to have toppled. 

Written by:

Published In:

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Miller Canfield | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »

All the intelligence you need, in one easy email:

Great! Your first step to building an email digest of JD Supra authors and topics. Log in with LinkedIn so we can start sending your digest...

Sign up for your custom alerts now, using LinkedIn ›

* With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name.
×
Loading...
×
×