The myth of mandatory trade mark enforcement

Trade mark disputes pop up all the time. Often it's a David v Goliath affair with a large incumbent with an equally large legal budget seeking to squish a plucky start-up.

In some cases, the Goliath can attempt to use its registered trade marks to oppress an upstart providing goods or services in an area completely unrelated to it.

Some may see this kind of action as completely unreasonable on the basis that there couldn't conceivably be any confusion or intention to take advantage of the reputation of the incumbent.

Others might comment that a trade mark owner is required to enforce their trade marks otherwise risk losing the ability to enforce them in the future or as is sometimes mooted lose the trade mark altogether.

The first thing to say is that a trade mark owner is not going to lose their trade mark through a failure to enforce their trade mark right.

Failure to enforce may result in the trade mark becoming diluted and generic, in which case a third party may seek to invalidate the registration, but this process would never happen automatically.

Secondly, a trade mark owner will not lose their ability to enforce their trade mark rights simply because they do not enforce all potential misuses. This is because all potential misuses are not the same and a perceived infringement does not always equate to a cast-iron case against the alleged infringer.

Some examples may be useful.

Example A

Behemoth Enterprises runs a hugely successful business manufacturing hardware. Behemoth becomes aware of consulting company using the 'Bohomoth' mark providing advice to companies on hardware.

Example B

Behemoth again becomes aware of a company using the Bohomoth mark but this time in the field of kindergarten services

In example A, action would be entirely justified in taking action even though Behemoth is not in the field of consulting services directly but there is a clear likelihood of confusion arising in the minds of consumers as to whether the consulting firm is linked to the goods supplier.

It's also worth remembering that a trade mark owner is also not restricted from taking action for just identical marks but also for similar marks (hence the Behemoth vs Bohomoth example).

In example B, the grounds for taking action would be far more limited. It is not so clear cut however at its heart, there is a very low chance that a potential customer of a kindergarten would consider that there is a connection between the kindergarten and the hardware manufacturer1 even one where Arnie works.

Whilst it is appreciated that a trade mark owner does not always have to pursue only those infringements it has a cast-iron case in relation to, there is certainly room for some nuance on the part of the trade mark owner in determining which perceived infringements to pursue.

At the same time, it is not a requirement that the trade mark owner is under a duty to pursue each and every infringement.

Support for the concept that a trade mark owner is not obliged to pursue every perceived infringement can be found in this USPTO report to Congress from 2011. In their report whilst noting that there is an affirmative obligation to protect a trade mark from misuse, they noted that (at page 6):

A trademark owner is not required to object to all unauthorized uses that might conflict, for not everys third-party use poses the same risk of eroding distinctiveness in the marketplace.

Additionally, they included reference to the case of Chicago Bears Football Club Inc. v. 12th Man/Tennesse LLC, 83 USPQ2d 1073, 1082 (TTAB 2007), quoting McDonald's Corp. v. McKinley, 13 USPQ2d 1895, 1899-1900 (TTAB 1989) from the USPTO's Trademark Trial and Appeal Board:

[I]t is entirely reasonable for the [trademark owner] to object to the use of certain marks in use on some goods which it believes would conflict with the use of its marks . . . while not objecting to use of a similar mark on other goods which it does not believe would conflict with its own use.

As with the examples above, failing to pursue example B above, is unlikely to result in a reduction of the distinctiveness of the Behemoth mark for hardware manufacture and it is not reasonable to hold a belief that usage of Bohomoth for kindergartens would conflict.2

In any event it's clear that the affirmative duty is not to pursue each and every infringement but to pursue infringements which could erode distinctiveness.

Of course what cannot be ignored is that in practice there may be little difference between the two due to the determination being in the eye of beholder however a line should be drawn somewhere.

In reality it would be sensible in drawing that line to take into account the likelihood of a successful lawsuit and the potential for erosion of distinctiveness before taking the decision to send out a cease and desist letter.

Appropriate enforcement is a balancing act of taking action against all cases where there is a tangible threat to the trade mark owner's mark but at the same time not making threats which could be easily be rebuffed if the matter came to court or which at the very least risk attracting the ire of the court of public opinion.

* 1. The test for confusion is generally used where Party A's goods are similar/identical to Party B's and Party A is using a similar/identical mark. In addition to confusion, Party B can generally take action where Party A seeks to take advantage of the goodwill Party B has in its mark even where the goods are completely dissimilar. This could be the case with Bohomoth Kindergartens however, it is submitted that it would be very difficult for Behemoth to show Bohomoth is attempting to take advantage of the goodwill in the Behemoth name. 2. On a related note, acquiescence is another potential doctrine to consider, however failing to take action in example B would not constitute a waiver of a right to take action against example A.