The fast food company, McDonald’s, was recently accused of of being a trademark bully in a complaint filed with the European Union Intellectual Property Office by the founder and CEO of the Supermac fast food chain. The company claims that McDonald’s is bullying its competition by trademarking every word containing either “Mc” or “Mac.”
While this case involves a decision by a European court, trademark bullying is also a significant problem in the United States. Each year, there are a number of cases in the news involving “trademark bullying.” While some individuals view this type of behavior as merely adequate enforcement of an individual’s trademark rights, other individuals feel that this type of behavior goes beyond the reasonable bounds of trademark protection.
What Is A Trademark Bully?
The term “trademark bully” is often used to describe individual who either make over-reaching claims or are heavy handed in pursuing trademark claims. Over-reaching tends to occur when there is no commercial impact to the enforcer by the alleged trademark violation. Some of the various types of behavior demonstrated by trademark bullies include: unreasonable demand letters, overly burdensome litigation, or failing to agree to a reasonable compromise.
Ways to Determine Whether an Infringement Is Worth Pursuing
There are ways to pursue infringing marks without becoming a “trademark bully”. One of the key areas in which trademark holders often need help is pursuing rival’s infringing marks. Not every infringing mark, however, is worth pursuing. There are several important elements that an individual should consider in how to respond to an infringing mark, including the following:
Decide The Extent of the Infringement. It is very important to assess to what degree the rival’s mark is infringing on the trademark in question. More severe trademark infringements should be enforced more strictly.
Determine Core Names and Marks. Individuals might decide to avoid pursuing enforcement of trademarks that are expect to have a short duration including trademarks that are used for particularly limited products or advertising campaigns.
Determine the Basis of Confusion. If the infringement in question likely causes significant confusion for consumers and therefore greatly damages an individual’s goodwill in a trademark, an infringement should be more aggressively pursued.
The Goal of the Enforcement. Trademark owners should respond more severely to allegedly infringing marks that the rival is in direct competition and causing a loss of business for the individual.
Reasons to Retain the Services of a Skilled Trademark Attorney
In many cases, if a trademark owner does not adequately enforce use of a trademark against infringing marks there is a serious risk of the trademark’s value decreasing. Our practice has helped many individuals adequately respond to infringing marks. As a result, when faced with a trademark issue including potential infringement, the assistance of a knowledgeable attorney can prove to be particularly helpful.
Consider contacting the legal counsel at Whitcomb, Selinsky, PC for assistance with your trademark case. Our attorneys have been successful in helping a number of clients successfully handle complications with a trademark. Call our Denver office at (303) 534-1958 or complete our online form today.