Policing your trademarks is as important as registering them. Policing requires that you monitor the world of commerce to insure that others are not using your marks — or confusingly similar marks — and, if so, that you take immediate action against the infringers. Big corporations zealously defend their trademark portfolios but have they taken their policing responsibilities too far? Here’s a smattering of recent news.
Facebook — the world’s largest social network — recently sued Lamebook, a so-called parody web site — for trademark infringement. Facebook contends that Lamebook is not a legally protected parody but is trading off of “Facebook’s popularity and fame.” Since Facebook has no sense of humor, Lamebook has resorted to Twitter to get the word out. Here’s what it says on the Lamebook web site: “Well, Facebook didn’t like us sticking up for ourselves, so they shut down our Fan Page, are preventing any users from “liking” us, and won’t even let you share URLs with your friends if they point to Lamebook. In light of this, be sure to follow us on Twitter so you get updated with the latest and funniest of the lame!”
In a battle between pharmacy and grocery giants, Walgreens filed suit agains Wegmans supermarket chain in Virginia federal court, alleging that Wegman’s stylized “W” trademark is confusingly similar to that of Walgreens.
According to Walgreens, its “flying W” deserves trademark protection because it has been in use since 1951; Wegmans countered, alleging that the scripted “W” it adopted in 2008 is actually a copy of logos used by the supermarket in the 1930s. Interestingly, one source states that both companies used the same design firm for their logos. The trademark battle suggests that in this age of super stores, the line between pharmacies and grocery businesses is thin. Another source — tongue in cheek — suggested that Walgreens should be suing the Washington Nationals because the team’s W is an even closer match. 
Nice try but we think that might stretching the thin line to the breaking point.
In a recent opposition action, five Major League Baseball clubs (no, not the Nationals) have opposed registration of the mark “B” (no quotes) for children’s books. They claim that the mark creates a likelihood of confusion and false association — under Sections 2(d) and 2(a) of the Trademark Act — with their own multifarious “B” marks. Atlanta National League Baseball Club, et. al. v. Battat Incorporated, Opposition No. 91196839. The baseball teams claim that they use their marks to identify various goods, including printed material. They further assert that such a broad registration could hamper their development of other “B” marks.
Heard enough? Well, the Secretary of Commerce has recently been empowered to “conduct a study and report to the Committees on the Judiciary of the House and Senate on “(1) the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner; and (2) the best use of Federal Government services to protect trademarks and prevent counterfeiting.” To that end, the USPTO is requesting feedback from U.S. trademark owners, practitioners, and others regarding their experiences with litigation tactics, especially those involving an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.
–Adam G. Garson, Esq.