Policing Your Trademark Registration: Bakery Will Have to Pony up Some Dough

trademark registrationThe first step to protect your brand is to obtain trademark protection by registering a trademark, but this is just the first step of an ongoing process.  After acquiring a trademark registration, you must enforce it or risk infringers diluting your brand equity or unjustly profiting from it.  The United States Patent and Trademark Office will not enforce your trademark registration for you.  You must actively enforce your rights against infringers.  A recent story posted by the San Francisco Chronicle highlights the efforts of the University of Alabama to enforce their own trademark rights.)

Here are the basics of the story according to the article.  A bakery in Northport, Alabama received a cease and desist letter from Collegiate Licensing Co. in Atlanta.  Collegiate Licensing Co. has a contract to provide licensing services for the University of Alabama’s trademark portfolio.  It appears that the University has instructed them to aggressively go after anyone who is using their marks without an appropriate license.  The letter the bakery received requested that they stop using “trademarks, name, logos, colors, slogans, mascots and other indicia associated with the University.”  The bakery had been putting a scripted “A” similar to the University of Alabama’s logo on frosted cookies cut in the shape of an elephant or a football.    According to the letter, in order to make cookies with the University’s trademark, the bakery would need to obtain a license from the University.  Such a license would cost between $750 and $3,000 and require an additional royalty on each item sold.  The bakery says they are just a small operation and cannot afford to pay such a rate.

The impression one gets is that the University of Alabama is sort of a bully, going after the small mom and pop bakery that is just trying to sell cookies to Alabama fans who want to celebrate with their favorite school.  However, one can also see the University’s perspective.  The University of Alabama is an extremely well known brand, particularly due to the success of the football program.  The University profits handsomely from merchandise sales of items carrying their logo.  Because they obtained a trademark registration for their logo, they have the right to exclude others from using their trademark in commerce and from profiting from the demand their brand has created.  They also have an interest in protecting their brand image.  If other people were to use the logo in a crude manner, or on products or in ways  not approved by the University, it may tarnish the University’s reputation and weaken the value of their trademark.

The case generates some sympathy for the little guy.  You feel for the small bakery just trying to sell cookies that people request, but even in baked goods, trademark law still applies.  Perhaps the University and the bakery will be able to reach an agreement on a discounted license or some other arrangement.  But being able to control the use of your trademarks and rightfully profit from them is an important part of owning a trademark registration.  Enforcing your federal trademark registration is just as important as acquiring it.

To best protect your brand, consult with an experienced trademark lawyer can help you through all stages of the trademark process.