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When you need to play whack-a-mole


My first brush with a trademark marketing issue arose years ago when I was launching a hospital’s physician referral service. I utilized a planned one-time use oversized postcard with an illustration that creatively mimicked a Campbell’s soup can. The card was mailed to a large targeted zip code area with the simple and hopefully eye-catching concept, “When chicken soup isn’t enough, call ….”

It was good that I had planned to use the post card campaign only once as I soon after received a “cease and desist” letter for its future use from the Campbell Soup Company. I was flattered that my highly localized campaign was somehow seen by lawyers at Campbell’s headquarters in New Jersey. The corporation clearly worked diligently to protect the soup can and its well-known soup label from brand infringement.

Trademarks provide protection from illegal use. I had not sought permission to use a replica of the Campbell can in a design, and my external design firm had not cautioned me. Nevertheless, I learned to be careful going forward with marketing campaigns.

Beyond an ad campaign, my second experience with a trademark issue occurred when I was formally registering a customized logo system for a university sports team with the U.S. Patent and Trademark Office. The logo was a stylized “S” that was challenged by Specialized Bicycle as being too similar to the “S” they use on their manufactured bikes.

With some helpful legal negotiations, we were able to proceed as planned but only by agreeing the university would not use its mark on anything to do with campus bicycle races or a biking team.

Marketing responsibility

These two cautionary tales emphasize several significant trademark items for businesses, designers, and marketers. First of all, as intellectual property lawyer Matthew D. Kohel of Goodell/ DeVries notes, businesses need to be on top of their third-party vendors. Infringing on someone else’s trademarks is the responsibility of the marketing organization, not the design firm.

And, despite the occasional setbacks and initial cost in protecting a brand, the intellectual property — your brand — is a valuable asset for both small and large businesses. Kohel strongly advises clients to register, monitor and protect their distinctive brands to avoid being generic or losing the value of customer awareness and goodwill.

In this age of social media and the internet, proactive monitoring of your trademarks for products and services is now a significant but essential undertaking. If you handle monitoring internally or through an externally hired marketing firm, you’ll need to constantly review use of your marks on the business website, in blogs, in memes, white papers and on Facebook, etc.

If there is an abuse of your product or company name or marks, you need to investigate fully and collect information. Larger businesses may find the need to keep a database. In the case of your own brand’s infringement, you may benefit from the use of an attorney to assist you in preparing a formal cease and desist letter. Attorneys can also advise you of other enforcement issues, including if there is product counterfeiting.

Whack-a-mole time

Counterfeiting of products is an expanding problem. Going back to my earlier noted athletic logo, the university was self-monitoring and noticed a sweatshirt company was advertising unapproved logo clothing for sale on a website. With the rise of Amazon, Alibaba, eBay and PayPal accounts, counterfeiting of trademarks has clearly become a global issue. Kohel aptly notes the monitoring can sometimes seem like a “whack-a-mole” experience wherein monitoring and enforcement of one site results in the products then appearing on a different one.

Nevertheless, it is important to challenge illegal uses and continually use your valuable marks in order to protect them. Understanding of trademarks and also related copyright issues is an increasingly important role in today’s effective marketing.

Glenda LeGendre is principal of Marketing & Strategic Communications and can be reached at [email protected]