There are many reasons why trademark owners should carefully
select and clear new product names, trademarks and even product slogans and
phrases. Some of which include
selecting trademarks and slogans that are immediately eligible for trademark
protection and do not infringe third party rights.
Even when brand owners select trademarks and/or slogans that
would likely not
infringe third party trademark rights, it may
still be prudent, in some cases, to choose another mark.
For example, selecting marks that would
likely get lost in the marketplace noise with other similar trademarks is not
Furthermore, it is not a
good idea to select marks that would likely draw fire from a competitor that
aggressively enforces its marks against uses of similar marks – even when
consumer confusion is unlikely (we call those parties “Trademark
There may also be instances
when the adoption of a mark – although likely not infringing – may still draw
an objection from a competitor or another party in the trade – just
Not until a trademark attorney understands the gray of
trademark law – will s/he understand the gray of trademark law
and recognize that selecting a different mark altogether is sometimes your best
option – even if that is not what you want to hear.
From time to time I need to remind clients
that they do not hire me so that I can tell them what they want to hear – but
rather what they need to hear.
Robbie Robinson almost once said “You might hate me now, but you’ll learn to
love me later.”
There are instances when good business decisions (based on
sound legal advice) are to simply consider different product names or slogans
rather than spend hundreds of thousands of dollars (or more) defending a
trademark dispute brought by an over-zealous plaintiff with a weak case.
You might win the legal battle, but at what
business and economic costs?
product phrases and slogans and marks that would likely
draw fire from a competitor.
Companies should obviously steer clear of adopting
September of this year, Oakley, Inc. drew such fire when it was sued for
trademark infringement for using the trademark / phrase “Sweat it Out” for
The plaintiff, Lontex
Corp., is a manufacturer of athletic apparel and owner of several United States
trademark registrations for the mark SWEAT IT OUT for athletic apparel, including
The complaint alleges that Oakley’s use of SWEAT IT OUT for
sweatbands constitutes counterfeiting and is likely to confuse or deceive
consumers into believing that Oakley’s sweatbands originate with or are
sponsored by Lontex in violation of the Lanham Act (Trademark Act).
Lontex also alleges that Oakey’s misuse of the mark SWEAT IT
OUT constitutes willful trademark infringement, thus Lontex is requesting that
the court award triple damages, costs and reasonable attorneys’ fees.
Brand owners should spend their time and resources on brand
development and growth and not on defending unnecessary trademark infringement
allegations over the use of product slogans or phrases, not to mention the
possibly of spending thousand or hundreds of thousands on re-branding (and,
yes, I said the “R” word).
To read more about my views on trademark clearance and
selection, read my blog posts here, here and here.