Coach bag. Zack Hiller law blog

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Sometimes, enforcing a trademark claim can be a bad idea for your brand. While it is important to protect your company from trademark infringement in the market, companies can get a little overzealous with their trademark claims. At times, the court of public opinion can have a greater impact on your bottom line than any infringement claim. Let’s look at some of these trademark infringement cases to see which ones are winners and which ones damaged their respective brands.

Trademark Infringement; The Good, The Bad and the Ugly:

The Good: A well crafted luxury brand name can be a valuable commodity indeed. In the luxury handbag market, a brand like Louis Vuitton and Coach can fetch hundreds if not thousands of dollars for a single purse. These high price tags have made the brands rich targets for counterfeiters looking to make an easy dollar.  Counterfeit bags can be sold for a fraction of the cost and in some cases look identical to the real thing. The rise in these fake goods can dilute the brand, especially if the items bearing the stolen trademark are sub-par to the real goods. Additionally, the luxury retailers never see a dime from the counterfeit items, as their trademarks are being marketed illegally.

In 2010, these luxury brands began to fight back in earnest against the trademark infringement; striking at an unlikely target. They filed suit against a flea market whom, they argued, did not police its vendors who were flagrantly infringing on their brand. In 2013, they won and the flea market has been hit with millions in damages. This large judgement may act as a deterrent for future violators who choose to ignore the legitimacy of the luxury brands claims.

The Bad: Of course, not every case has such a happy ending. As stated before, some trademark infringement cases can hurt the brand in the long run. Take the case of a local craft brewery, Lagunitas, which sued its larger competitor, Sierra Nevada, over a new IPA offering. Lagunitas argued that the label and style of the logo used by Sierra Nevada was too similar to their existing IPA, and could cause confusion in the marketplace, leading consumers to believe the two were collaborating.

They further argued that they were the originators of the term IPA, an acronym for India Pale Ale, which has become an industry standard for a style of beer. It’s possible the case could have had merit, if Lagunitas could prove that the logo was markedly similar. What they didn’t count on was the backlash from the public at large. They were lambasted for the lawsuit; many fans taking to social media to beat up on the brand. This was hardly the type of publicity that the company was looking for and they withdrew the suit and made a public mea culpa for filing in the first place.

The Ugly: Some trademark attempts are so egregious as to become laughable, and unless you are a joke writer that is hardly the direction most brands want to go. In the case of the New England Patriots, they became the punchline for many. In the frenzy of the Patriots 2007 season, the team attempted to trademark the phrase 19-0 to celebrate their perfect season with tons of trademarked merchandise. The only problem, the New York Giants defeated the Patriots in that year’s big game; making the Patriots season end with a 18-1 record.  This led the New York Post to seek the trademark for the term, 18-1 to ridicule the team’s arrogance.

Before filing suit for trademark infringement or before filing for trademark protection it is important to ask yourself why you are filing. Is it to prevent confusion for consumers in the marketplace? Is it to protect a brand that is at risk of becoming less valuable due to copy-cat brands? If the answer is yes, contact a trademark attorney today.

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