Brand managers and marketers often wonder about the risks and consequences of not enforcing or protecting their trademarks from infringement. A shooting target formed by a series of concentric circles is the best graphic I have found to illustrate the legal answer to their frequent question.
Judging from the robust criticism Twitter has received about its lax or laissez-faire approach to trademark enforcement, the Twitter folks have never seen (or perhaps they have chosen to ignore) the shooting target graphic illustration. Distilling these criticisms to their essence, basically there are more than a few folks out there asking Twitter: “What are you doing?”
The irony of this is hard not to find amusing, given how Twitter explains its reason for existence this way: “Twitter is a service for friends, family, and co–workers to communicate and stay connected through the exchange of quick, frequent answers to one simple question: What are you doing?” For Twitter, only time will tell how “simple” the trademark enforcement “question” is for itself to answer.
Apparently the folks at Techdirt haven’t seen the shooting target graphic illustration either. In defending Twitter’s apparent “openness” in permitting others who are “simply building off the brand,” Mike Masnik of Techdirt has argued:
“As people always like to point out, trademark law requires you to “protect” your mark to keep it from being declared generic, but that does not (as many assume) mean that you absolutely have to sue or threaten anyone who makes use of your mark. Especially in cases where it’s clearly not making the brand generic, but simply building off of the brand, it can be a much smarter move to let it live on. People (often lawyers) seem to think that just because you can block a business for using a trademark, that it’s a good business decision to do so.”
Actually, there is more (or less) to risk or lose than Twitter being declared generic and part of the public domain for anyone (including direct competitors) to freely use without consequence. While it is true that genericide is the ultimate risk of a complete failure to stop infringements to the point where the word “twitter” no longer functions as a trademark to indicate source and is found to be abandoned, that highly dramatic and extreme result is not the only legal trademark concern; other more certain damage results along the way. So, not only does this viewpoint ignore the resulting confusion among consumers, and the relinquishing of a brand’s goodwill to another without the ability to control reputation and image, it also ignores the certain and inevitable shrinking or narrowing of the scope of trademark rights even if those trademark rights aren’t lost altogether.
Over the years, I have found that using the “worst case scenario” — trademark genericide — is probably not the most effective way to help brand managers and marketers appreciate that consistently enforcing their trademark rights against infringing uses is not only a good legal strategy, but a sound business strategy too. When faced with what they perceive to be a “highly remote” risk of genericide, it is far too easy to say, “we’ll take our chances,” the benefits of permitting others to “build off the brand” are worth it and outweigh the risk of genericide, or we’ll be “super rich” by then anyway. I suspect that those who are inclined to reach this conclusion do so because — like the airline in-flight warnings about turning off electronic devices — they don’t believe the plane will go down if they “forget” to turn them off, or that genericide will occur, if they fail to police trademark infringers. For this reason, talking about more certain negatives makes sense.
So, back to the shooting target graphic: It is important to appreciate that trademark rights are dynamic, they can grow in scope (get stronger) or shrink over time (get weaker). Let’s say that the above target (including all of the circular bands or concentric circles) represents the initial scope of rights in the Twitter trademark. Let’s also say that each of the bullet holes represents another’s use that creates a likelihood of confusion — an infringing use or infringement of the Twitter trademark. A bullet hole in the bulls-eye represents an easy infringement for Twitter to prove and stop, involving an identical trademark and identical and competing products or services. But, as the circular bands move further and further away from the bulls-eye, the uses falling into these bands have more and more differences to the Twitter trademark, perhaps the marks are more and more different, or the goods or services are more and more different, or both. So, if Twitter tolerates infringements in circular band 6, its trademark rights will be certain to shrink to now exclude circular band 6, and if Twitter next begins to tolerate infringements in circular band 7, its trademark rights will then shrink to exclude circular band 7, and so on, until the only infringing and stoppable uses are identical marks for directly competitive products or services.
Of course, most brand managers and marketers are looking for broader protection and stronger trademark rights than this, at some point during the life cycle of a brand. Indeed, it seems inevitable, as business grows around a brand, others begin to target that brand, attempt to ride its coattails, and eventually, brand managers and marketers will have strong feelings about stopping another’s particular use. The problem is, a lax approach to trademark enforcement not only confuses the marketplace and gives others control over goodwill and reputation, it is certain to narrow the scope of enforceable trademark rights, in most cases well past where the brand owner would eventually like to draw the line.
So, stay tuned, we’ll eventually be able to see whether Twitter takes any legal action on its most recent “uncomfortable” feelings about some confusingly similar names that incorporate Twitter’s trademarks.