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Trademark Bully Or Responsible Trademark Owner?

Posted in Almost Advice

Travelers Cos., a large property-casualty insurer, sent a cease and desist letter to a small consulting firm in Anchorage, AK demanding that it stop using the image of an umbrella in connection with its business. Travelers has sent similar letters to other companies and taken action before the Trademark Trial and Appeal Board against similarly situated companies. Is Travelers a trademark bully or responsible trademark owner?

Context is important to answer this question. In a registration context, it is important for trademark owners to protect the scope of their rights and the conceptual strength of its mark. Depending on the state of the Principal Register at the time the trademark owner files its trademark application, that may mean attempting to keep the Principal Register clean of any mark that includes, for example, an umbrella design. Or it may mean allowing some umbrella design marks to be registered and not others because some trademark applications fall within the scope of rights that the trademark owner is trying to protect.

In the real world marketplace, the use of an arguably confusingly similar mark must be put in context in terms of its impact on the scope of Travelers rights, for example. The consulting company is Anchorage, AK is probably a single location business that does not market its services outside of Anchorage, AK. Accordingly, the impact that this use would have on Travelers’ scope of rights or commercial strength is probably negligible. Too often, companies forget to put into context the use of the arguably infringing mark before sending cease and desist letters. But as the Travelers story demonstrates, these letters are becoming more public and so consideration needs to be given to each case before making the decision to send a cease and desist letter.