By MIKE TOLSON, HOUSTON CHRONICLE Published 07:20 p.m., Monday, September 5, 2011
So a private school student in Virginia named Jimmy Winkelmann gets annoyed when he sees all his preppy classmates trying to "fit in" by donning fleece jackets made by the high-end outdoor apparel company The North Face. He decides to start his own company and sell similar jackets, naming the enterprise The South Butt. Get it? North/south, face/butt?
North Face got it, and promptly took Winkelmann to court alleging trademark infringement. The publicity made North Face look like a bully and helped Winkelmann's sales. Few things are guaranteed to get the attention of the press and a rise from the public like an old-fashioned ridiculous lawsuit.
Then again, not all ridiculous lawsuits are created equal. Those involving a question of trademark infringement may seem silly - why would Chrysler bother to sue a small private school in Florida for adopting its Dodge Ram logo for its athletic teams? - but they are dead serious. It's about protecting a brand, an identity, which is why North Face tried to stomp on South Butt and why the Texas Department of Transportation recently ran to federal court in Austin hoping to stop distribution of Don't Mess With Texas, Christie Craig's novel about sexy studs and winsome cowgirls doing what comes naturally.
The fact that U.S. District Judge Sam Sparks denied the agency's request, saying its trademarked slogan did not apply to book titles and that it was not apparent the agency would prevail at trial, will not deter TxDOT from getting in the face of anyone using the slogan for commercial benefit. In the 25 years since it trademarked those four words, it has sent out scores of cease-and-desist letters to enterprises that have used it. You can license Don't Mess With Texas, but the agency has to agree to the use and be compensated.
"There are some good reasons why trademark owners go to court," said Priscilla Dunckel , an attorney who specializes in trademark litigation and intellectual property law for Baker Botts . "When someone has a trademark, they have an obligation to protect it. It can become weak or it can be considered abandoned if they don't."
The purpose of trademark protection, Dunckel said, is to give consumers confidence that the quality of an item or a service advertised under a particular mark is controlled by the trademark owner. Only then can they be sure that what they pay for is the real thing, and even if a trademark owner's attorneys don't really want to file suit they have to just do it, knowing that people who hear of it may wonder where's the beef, and perhaps let their fingers do the walking to the nearest keyboard to write an ugly blog post in the hope that it will reach out and touch someone.
Trademarks of popular products or companies - including those well-known slogans - can literally be worth billions of dollars. Tread on them at your peril.
"If someone is allowed to use a variation of a mark for products or services that consumers would assume come from the trademark owner, even in a very small market that might not appear to be a big deal, then you get the argument that if they can do it and coexist within the market, then there's room for others to do it, too," Dunckel said. "Then your trademark loses its uniqueness and the ability for consumers to rely on it. The trademark is what sets products and services of one company apart from those of another."
Which was precisely the point made by TxDOT spokeswoman Karen Amacker , who explained that the agency perceives a threat whenever someone uses its slogan for any purpose other than encouraging Texans not to use highways as trash baskets. She did not say whether the agency would take action if Gov. Rick Perry incorporates it into his campaign material.
"When the slogan is used outside of this context, it misrepresents the meaning of the slogan, dilutes its value and blurs the slogan's association with the statewide litter prevention program," Amacker said.
The words "dilutes" and "blurs" were not included casually in her comment. They refer to specific legal concepts familiar to any IP lawyer. Who goes to court arguing such notions? The corporate giants, of course, who are ever on the lookout for a violator. But pretty much everyone else as well.
No product is too silly to defend. The emerging software market of Apple iPhones includes two companies offering apps that make farting noises at the push of a virtual button. One sued another because it didn't like phrases used in its promotional language.
Usually such legal dust-ups end with discussions following a cease-and-desist letter. Even if a lawsuit is filed, it rarely goes to trial. The small guys, even if they believe they have a case, typically don't have the money for a serious fight, which is why Jimmy Winkelmann is now a college student worried about final exams and The South Butt is officially dead.
[...] a private school student in Virginia named Jimmy Winkelmann gets annoyed when he sees all his preppy classmates trying to "fit in" by donning fleece jackets made by the high-end outdoor apparel company The North Face. Few things are guaranteed to get the attention of the press and a rise...
Source:
No comments:
Post a Comment