Apples® to Apples: Policing Your Trademark

It’s November, and we are well into apple season. Have you heard about the trend in apple branding and policing of fruit-related tradmarks? It all started with the Honeycrisp, a variety of apple that has apparently revitalized the apple industry. Apple “brands” have been cropping up (pun intended), and the owners are taking trademark ownership seriously in protecting, policing, and monitoring their marks.

Policing and Monitoring? Say What?

Policing your trademark isn’t about being the bad guy; it’s about protecting a valuable asset and preserving all of the good will you’ve built into your brand. You may be under the impression that once your mark is registered with the USPTO, you’re worry-free. It’s registered! Your mark can’t be touched or challenged by others! Your mark is invincible! Hate to be the bearer of bad news, but you’re wrong.

It doesn’t end at registration. Whether it’s enrolling in a service such as Thomson Compumark Watch Service, setting up a Google Alert, consulting with an attorney, or all of the above, keeping a close eye on whether and where others are using a mark confusingly similar to yours and shutting down uses that hit too close to home are both important considerations.

Worst-Case Scenario, What Could Happen?

What’s a worst-case scenario if you don’t police and monitor your mark? Years down the line, you might learn that potential customers mistakenly went to a business with a name similar to yours. Then, they purchased goods from that company thinking that company was you. And not just that, but there are others businesses out there using trademarks confusingly similar to yours. Your trademark could lose its protection if it’s being used by others in your market and you’ve done nothing about it. Further, delay in enforcing your rights, depending on the time frame at issue, could be considered “laches” (that is, an unreasonable delay that has prejudiced the other party).

Examples of Policing and Monitoring: From Fruit to Handbags

What do “Pink Lady,” “SweeTango,” and “Cosmic Crisp” all have in common? All of those are real examples of branded or “club” apples. So what does this have to do with trademark monitoring and policing?  Well, there are supposedly only 45 farmers licensed to grow the SweeTango. You can bet that any others that attempt to do use the mark in connection with apples will be slapped with a cease and desist letter.

Not really an apple person? How about booze? Alcoholic beverage brand Shock Top has somehow gotten away with releasing the Shock Top Honey Crisp Apple Wheat, a beer/hard cider hybrid. The owner of Honeycrisp, the apple that started the “club” apple trend, would have done well to police that use of the mark and shut it down — it now runs the risk of other food and beverage brands using HONEYCRISP as a brand or, worse, as a flavor-descriptor, regardless of whether that food or drink contains actual HONEYCRISP apples.

When Trademark Policing Goes Wrong

Another famous (or infamous) example of trademark policing? Louis Vuitton. LV is so dedicated to the policing of its name and logo, it has often been branded a trademark bully. For example, in 2012, a U Penn Law School student group held a symposium on fashion law and used this poster to advertise the symposium on campus:

LV trademark policing example

King Louis’ response? This cease-and-desist letter. That didn’t go over well, but, to its credit, the luxury brand has presumably expanded countless resources into the development of its brand. Over-the-top or not, its efforts to police its marks are all a part of preserving its brand and its identity. (If you’re interested in Penn’s response, you can find it here.)

You worked so hard to come up with a name and to establish an “identity” under that brand. Consider policing and monitoring the use of your mark, and marks confusingly similar to yours. Don’t lose all of that good will you worked so hard to build.

(Pssst, for more on “club” apples and the trend in apple branding, take a listen to Episode 627 of Planet Money from National Public Radio, here. Interesting stuff.)

What’s next? Click here to download your [free] Essential Legal Checklist from Spear IP.

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