Unlike the seemingly never-ending Texas heat this past summer, at least the temperature of one dispute has cooled down (if not completely cooled off). On or about August 25, 2011, Facebook apparently settled its ongoing trademark dispute with parody site Lamebook (although I am sure Facebook does not legally agree with the “parody” characterization). As reported in the Austin American Statesmen:
“Facebook and Lamebook said:”We are pleased to arrive at an agreement that protects Facebook’s brand and trademark and allows for Lamebook’s continued operation. The parties are now satisfied that users are not likely to be confused.”
As a result of the settlement, Lamebook keeps its name and commensurate URL (albeit with some site disclaimers), and Facebook maintains more than a veneer of policing its trademarks.
As I mentioned in this previous post, Facebook (along with Apple, Zynga and others) have been trying to grab as much digital real estate as possible regarding their trademarks (leading some to refer to the practice here and here as “trademark bullying”). Although trademark owners have a duty to police their trademarks, the “likelihood of confusion” test under trademark law (i.e. the DuPont factors in the United States Court of Appeals for the Federal Circuit) remains the litmus test. Frankly, I have yet to find someone who legitimately believed Lamebook to be anything other than a fun/satirical take on Facebook. As I stated in this earlier post,
“Sarcasm aside, what Facebook, Apple and Zynga have in common is that their marks have arguably acquired a high level of distinctiveness due to the proliferation of their products and services online. Sharing a suffix alone, without more, will not be enough to support confusing similarity, and these companies will need to show more to prevail.”
Clearly, these companies (and others) are aggressively protecting their brands, but they must balance these tactics against both the law and potential consumer backlash. So what is a company to do when considering launching a brand that may be construed by a “trademark bully”? Here are a few helpful (but by no means exhaustive) tips to handle them on the digital playground:
1. KNOW your playing field. As aforementioned, trademark law requires a “likelihood of confusion” for infringement to prevail. If you are entertaining the use of a descriptor or logo that is a permutation of a recognized brand (especially any of the ones mentioned in this post), do your homework by investigating potential uses of the mark online. If you will be investing heavily in the anticipated brand, have a full search performed through qualified trademark counsel so that you have a feel for other uses in your field. Believe me, you will likely get their attention if you use your intended mark in commerce or otherwise file an intent-to-use trademark application for federal registration in the USPTO, so this homework is mandatory.
2. UNDERSTAND the rules. Similar to the foregoing, trademark rights depend upon a number of factors, and a basic understanding of what constitutes a trademark and how such rights accrue is essential to understanding hat rights you may (or may not) have in your mark. With the availability of Internet resources on the topic, developing a basic understanding of trademark law requirements is not as difficult a proposition as one may think.
3. HOLD your ground. Just like confrontation on the playground, don’t reflexively back down from a company demanding your immediate compliance with a cease & desist demand – especially if you did your homework before beginning your use of the mark in your business. Although they may forcefully assert certain facts in their demand they deem dispositive, the reality is that they may not have done their homework. In my experience, sometimes such demands have not been properly investigated or may be in error. You need to investigate them as thoroughly as possible, and confer with a qualified trademark attorney before responding.
4. RALLY your “teammates”. If you are in the position of having used your mark in commerce for some time, you may be able to use publicity concerning the dispute to your advantage. Part of the reason Lamebook helped induce a settlement was not only its legal position, but the negative publicity generated against Facebook – most people understood the purpose of Lamebook and were not at all confused by the lighthearted fun and arguable satire/parody. Rather than take additional hits to the brand, the complaining company may be willing to deal (and in some cases, consent to your continued use). Properly handling such publicity is no easy task, but may be worth a look.
5. STRIKE BACK where necessary. Similar to playground shenanigans, don’t be afraid to take the offensive when the facts require it – this is where qualified trademark counsel is invaluable.
C’mon…admit it…there’s nothing like punching a bully in the nose when they deserve it. In doing so, however, make sure you are prepared for a potential fight. Your brand may be counting on it…
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