Legally Speaking: Brand Name Bullies

John G. Browning Oct. 3, 2007, 2:18pm

As a lawyer who represented companies on both sides of trademark infringement cases, I understand why trademarks can be so vital to a business.

Trademarks provide guarantees of quality and consistency of the goods or services with which they're identified; for example, I know that the Big Mac I order in Fresno, Calif., will be of the same quality as the one I order in Rockwall, Texas, or Syracuse, N.Y.

Companies expend considerable time, effort and money to build not just consumer recognition of their trademarks, but consumer confidence as well. Of all the intellectual property that a business may have, none is more visible that its trademarks: one study estimated that the average American is exposed to about 1,500 trademarks each day!

Couple this importance with the fact that a trademark can be considered "abandoned" if adequate steps are not taken to enforce it, and you have a pretty good idea of why companies are so vigilant about their trademark rights.

Some trademark holders, however, take this vigilance to an extreme, to the point where they become "brand name bullies."

Take, for example, British billionaire/adventurer Richard Branson, founder of Virgin Records and Virgin Airlines. Branson may have cultivated a rebel persona over the years, but he's all establishment when it comes to protecting the Virgin brand. So much so, that he's gone after a wide range of companies that include the word "virgin" in selling their wares � businesses like Virgin Publishing, Virgin Cigar and Virgin Threads, an online clothing retailer that Jason Yang runs out of his house. At the time he was sued by Branson's Virgin Group Ltd. (which had over $8.1 billion in sales that year), Yang had made about $105,000 in sales over the same time period.

Branson's lawyers claimed that when consumers think "Virgin," they think of Branson � what lawyers call secondary meaning. Yang, on the other hand, argued that "virgin" is a common English word, not a made-up corporate name like Lucent, for example.

Should someone like Richard Branson be able to stake such a claim? If so, where does it stop? Can Branson use his belief that his trademark rights will be diluted to shut down the makers of extra virgin olive oil, or keep people from watching "The 40 Year-Old Virgin," or ordering "virgin" frozen drinks? If anybody should be able to lay claim to the "Virgin" moniker, shouldn't it be the Catholic Church?
All too often, companies asserting their trademark rights engage in overreaching, overzealous behavior.

Take, for example, the hamhanded behavior of the National Pork Board. This group threatened to sue Jennifer Laycock, a self-proclaimed "lactivist" in Ohio who operates a Web site devoted to the rights of nursing mothers. Ms. Laycock defrays expenses by selling novelty T-shirts with pro-breastfeeding slogans.

One of them � "The Other White Milk"-- drew an angry letter and threats of legal action from lawyers representing The National Pork Board, who felt the saying was too close to their catchphrase "The Other White Meat." After the "lactivist" went public with the Pork Board's threats and an Internet backlash was levied against the trade group, they quickly backed off. They apologized to Ms. Laycock, and even sponsored a fundraising campaign for the Mother's Milk Bank of Ohio.

She fared better than Mike Rowe, a Canadian Web designer who registered an internet site with the address, and angered software giant Microsoft in the process.

Mike was surprised to see the company's legion of high-priced lawyers descend on him when he demanded $10,000 to give up his Web site. Ultimately, Mike had the revelation that he could not match lawyers and checkbooks with Bill Gates, and he gave up his Web site in exchange for Microsoft's agreement to pay for the costs of switching over to a new site and to throw in a few Microsoft goodies like an Xbox video game console.

New Jersey entrepreneur, Marcos Carrington, heard from one of his state's favorite sons, rocker Jon Bon Jovi, after Carrington marketed an energy drink called "Mijovi." Not long after Carrington launched his coffee-flavored beverage in stores and cafes in northern and central New Jersey, the musician stumbled upon it and notified his lawyer.

Bon Jovi's counsel claimed that Carrington was trying to capitalize on Bon Jovi's celebrity, not only through the name but through promotional materials for the caffeine-based concoction that proclaimed "its milife�its mijovi" (one of Bon Jovi's biggest hits is the song "It's My Life").

Carrington denied the accusations, and maintains that the name was inspired by his girlfriend Jovita Saenz, and that Jovi (short for Jovita) means "jovial life." Carrington's lawyer, James Nichols, points out "These are two different products entirely. I don't think anybody is going to be confused about Mijovi drink with caffeine and the songs that Bon Jovi sings or Jon Bon Jovi." Who will prevail in court remains to be seen, but the U.S. Patent and Trademark Office is sure to think that someone's case is "living on a prayer."

Last year, Dallas coffeehouse Standard & Pours got a jolt stronger than any espresso when it was sued in a federal trademark infringement suit by McGraw-Hill Companies, Inc., owner of the financial analysis company Standard & Poor's. The coffee shop featured a stock market theme complete with bond and stock certificate decor, broadcasts of investment-related television and radio programs, and aptly named coffees like the "Opening Bell House Blend."

McGraw-Hill claimed that the coffee establishment, owned by single mother Pascale Hall, was appropriating the Standard & Poor's trademark and confusing and misleading the public into believing that its goods and services "are sponsored, licensed, endorsed, approved, authored, or somehow connected with McGraw-Hill or its Standard & Poor's business division, when they are not." Among other demands, the publishing powerhouse wanted the coffee shop to pay as damages "all profits realized by Standard & Pours," as well as change its name and transfer its Web site address.

Ms. Hall and her lawyer regarded it as "a silly lawsuit to file." She scoffed at the notion of consumer confusion, pointing out that people came to Standard & Pours seeking coffee, not financial advice, and that no one walks into Standard & Poor's in Manhattan to order a latte.

Nevertheless, playing David to McGraw-Hill's Goliath in protracted litigation was not how Ms. Hall envisioned her future. The coffeehouse owner and the $6 billion per year financial publisher ultimately reached a confidential resolution of the case. While the establishment changed its name to Opening Bell, it has otherwise remained in business, right down to its stock-themed decor.

It may even prove to be a "win-win" proposition: after all, lawyers who stay up late at night devising ways to protect their clients' trademarks are bound to need a lot of coffee.

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