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 advisable. 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 Bullies”). 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 because.
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 business 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. As 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?
Companies should obviously steer clear of adopting infringing trademarks, In 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 sweatbands. 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 sweatbands.product phrases and slogans and marks that would likely draw fire from a competitor.
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).