We recently posted an article discussing the University of Alabama’s efforts to enforce their trademark registrations. The story involved a small bakery that makes cookies using the University’s “A” logo. The University of Alabama contracts with Collegiate Licensing Co. to police their trademark portfolio. Collegiate recently sent a cease-and-desist letter to this small bakery in Northport, Alabama. The letter ordered the bakery to stop selling products that contained the University’s trademarks. The University of Alabama has a trademark registration covering its “A” logo.
Unfortunately for the University of Alabama, Collegiate Licensing’s tenacity backfired. There was quite a bit of public backlash over the perceived bullying tactics of the University. In response to the negative publicity, the University offered the bakery an apology letter. The letter stated that “[the University] will work with [the bakery] to resolve this issue quickly and amicably so that [the bakery] can continue to produce pastries that bear the university’s marks.” (For more on the story about the trademark dispute between the University of Alabama and the bakery see TuscaloosaNews.com article by clicking here.
While enforcement of one’s trademark portfolio is critical, in this case it is likely not worth the bad press that the University received. Careful consideration should be given before sending out demand letters. As discussed in the last post, there are many reasons why the owner of a trademark registration would want to be vigilant in protecting their mark, but as is clearly shown by this example, all potential consequences should be thought out in advance.
Bad press from threatening a small business is one reason to avoid aggressive trademark enforcement. However, another recent news article provides solid evidence as to why universities should diligently police their marks. (To see NRP State Impact article regarding Ohio State University trademark licensing, click here.) http://stateimpact.npr.org/ohio/2012/08/28/ohio-state-joins-state-schools-claiming-trademark-infringement-on-apparel-cookies-and-vulgar-t-shirts/) For one, collegiate licensing is a $2.7 billion business. The schools stand to profit handsomely from sales of licensed merchandise. Another is that schools don’t want their marks to be used in ways in which they don’t approve. Losing control of your mark can really tarnish its value and send the wrong message to consumers.
Although small businesses may not be thinking about trademarks in exactly the same way as large universities, it is important to think about your trademark strategy. For example, how can a small business best establish a brand presence? And once it has been established, in which ways should you allow others to use your mark? Is it in your best interest to partner with others to increase your brand reputation or is it better to tightly control your mark?
Of course, obtaining a trademark registration to protect your company name is a good start. But making a plan to enforce your trademark registration before going commando on your competitors or potential infringers is also important.