It can be a good thing to think of your trademarks as celebrities and of yourself as their agent, publicist, bodyguard and fan. Your marks thrive in the public eye. They crave media attention. In fact, knowing that they have an adoring public is the key to their self-confidence, their self-esteem and their success. So, as their agent, you need to arrange appearances for them, make deals for them and get them out there in the public eye. As their publicist, you need to create a buzz around them, advertise them and make sure an enthusiastic audience awaits them. As their bodyguard, you need to protect them and emphasize their importance by your vigilant presence. As their fan, you must follow them, show up to their events, keep scrapbooks of their clippings, gossip about them and obsess over their fame.
This foregoing extended metaphor might sound a bit silly, but it has a serious point. Two recent cases illustrate, by their contrasting outcomes, the importance of being an enthusiastic supporter of your trademarks.
The first is Kaufman & Associates v. Bausch & Lomb Inc., which is currently pending in the U.S. District Court in Florida. Plaintiff Kaufman is an ophthalmologist who provides vision correction services under a SEE BETTER LIVE BETTER trademark, and Kaufman obtained a federal registration for this mark in 2011. In that same year, Bausch & Lomb (B&L) became interested in the mark and did an analysis of its value. B&L found that the mark was weak and of relatively low value because a trademark search revealed more than 20 other ophthalmology centers were using the same slogan as a common law mark in other parts of the United States. This information determined its strategy as a potential buyer: B&L approached Kaufman and said, in essence, either sell the registration to us at the price we are offering, or we will simply start using the mark on our own because we do not need your permission to go forward. When the parties could not agree on a price, B&L went ahead and began using the slogan. Kaufman then filed suit based on his federal registration, and he followed with an aggressive motion for a preliminary injunction against B&L. The weakness of Kaufman’s mark appeared during deliberation on the motion. A federal registration creates a presumption of the validity of a mark, but the presumption is rebuttable, and B&L attacked the mark’s validity with evidence that it is descriptive, that it is not distinctive or unique to Kaufman because of its use be several other parties and that Kaufman had failed to enforce it against junior users of the same mark. The Court noted Kaufman’s declaration that he had launched a “major branding initiative” in 2009 but found that because Kaufman was not able “to quantify its investment in promoting the mark or describe the extent of the audience reached by its efforts,” the declaration, by itself, was insufficient. Had Kaufman enforced his trademark rights against junior users, carefully kept a fame file for his mark by documenting his advertising expenditures, and preserved any unsolicited media attention his business had received because of the branding initiative, he might have fared better in the motion deliberation. As it turned out, Kaufman lost the motion, and he is now fighting an uphill battle against an extremely well-resourced opponent.
The second case is CPC Properties, Inc. v. Dominic, Inc., which is currently pending in federal district court in Pennsylvania. CPC owns two federal registrations for a CRAB FRIES mark, which it has used for the seasoned French fries it has served in its Chickie’s & Pete’s restaurants in the Philadelphia area since 1978. When Dominic began using an image of a crab beside the term “fries” in its menu, CPC filed suit for trademark infringement and dilution, and, when Dominic failed to make a sufficient answer, CPC followed with a motion for judgment on the pleadings. The court noted that CPC had “spent millions of dollars in marketing and promotion centered on this trademark and has gained media and public recognition and goodwill as a result.” CPC’s advertising efforts paid off in numerous ways: in 2011, Chickie’s & Pete’s was recognized by ESPN as the ‘Best Sports Bar in North America.’ More significant, CPC was able to convince the court that its CRAB FRIES mark is famous in Pennsylvania and therefore qualifies for protection under the State’s anti-dilution statute. Such a ruling by a federal court makes for an extremely sharp sword when it comes to future trademark enforcement actions. So, under a cost-benefit evaluation, even though this case is still ongoing, CPC is well poised to prevail, and CPC will probably be more than recompensed for its litigation costs by the increase in the inherent value of its CRAB FRIES trademark as a result of the court’s ruling on the motion.
Investing in your trademarks through registration, brand development, promotion and proper enforcement is one of the best business investments you can make. The reason is that the value of a mark grows in direct proportion to the extent of public awareness of the mark, and because you control the use, you have a strong influence on public awareness of the mark and hence on its overall value. Unlike most investments in which we hand our money to someone else and hope it does not vanish, an investment in a trademark is really an investment in yourself.