The United States Patent Trademark Office (USPTO) registers trademarks, however, it will not enforce a registration—that is your responsibility. There are several ways an owner can protect their mark. For example, an owner could monitor filing on the USPTO website and challenge applications that threaten their mark. In the event an owner becomes aware of another use of the registered trademark, a “cease and desist” letter will likely stop an infringer. If that doesn’t work an owner can take it to court. It is smart to be proactive in enforcing your protections. However, an important question to ask in every scenario is—are the tactics highlighted above always necessary?
Big Universities spend large sums to protect their mascots, slogans and logs. Profitable universities with unlimited resources like Duke or Alabama will issue cease and desist orders (accompanied with strong threats of legal action) to small businesses they believe threaten their trademark.
In fact, just this year Duke estopped a small California wine company from trademarking Duke’s Folly. Notably, the company solely operates out of California, offers online orders only, and is owned by the Duke family. Duke Univ. claimed that the name would suggest an official partnership between the North Carolina school and the wine company. For the wine company, the best option was to save resources and settle. Duke ultimately permitted the use of Dukes’ Folly as opposed to Duke’s. It is up for debate as to whether or not consumers would assume a partnership existed between the two.
Ultimately, a business with fewer resources was prohibited from utilizing its desired mark and was essentially forced into settlement due to lack of resources. This is only one of many examples of well-funded universities targeting small companies throughout the U.S. for, what some would argue to be, minimal claims.
Many would call this “Trademark bulling.” Defined by the USPTO as the practice of a trademark owner that uses their rights to intimidate another business beyond what the law reasonably permits. However, others argue that this is effective and proactive enforcement of a registration. What do you think?