The importance of policing your trademarks: The need to "Strike Back"
I was recently asked by the Toronto Star to comment on Lucasfilm’s decision to serve a charitable organization called Newmindspace with a cease and desist letter demanding that they stop all use of the term “Light Saber” in association with their charitable events. You can see the article and get some more background here. As we all know, Lucasfilm’s branding is iconic – it has totally infiltrated popular culture. The company owns an arsenal of trademarks with well over 100 registered marks in Canada including “Light Saber” registered back in 1977, and still in use today.
When asked to comment on the demand letter I explained that Lucasfilm had no choice. They MUST enforce their trademark rights. The reporter alluded to how it might be perceived – a massive company like Lucasfilm using the weight of its resources to enforce its marks against their unauthorized use by a charity. The conversation raised an important point about the necessity of trademark enforcement even in the face of negative publicity.
The need to enforce ones trademark rights applies equally to all trademark owners, big and small. No matter how forceful it may appear, and no matter who the infringer might be, if you don’t police your marks you risk losing them.
To better understand the importance of trademark enforcement it is helpful to consider what it is you are protecting. Think of your trademark as an arrow. Every time a consumer encounters that mark on a good or in association with a service it operates by pointing back at your business. The trademark therefore plays a vital role – it is like a signpost for consumers pointing them in the direction of sources that they have grown to depend on and trust.
Ensuring that your trademark continues to point directly back at your business, and only at your business, is integral to maintaining your trademark’s power. This is referred to as distinctiveness, which is defined as a trademark’s ability to actually distinguish the goods or services in association with which it is used by its owner from the goods or services of others. So, in order for a trademark owner to truly distinguish its goods and services from those of others’, it must ensure that no one else is making unauthorized use of its marks. Furthermore, the very purpose of registration is to ascertain exclusive federal rights to use of your registered mark. Putting a stop to unsanctioned use is therefore, the only way to preserve distinctiveness and your right to exclude others from using your marks.
Whether owned by a large corporate entity or a small sole proprietor, well known marks, like “Light Saber” are exposed to even higher risks when left unpoliced. Some marks are so well known that the public generally assumes that when they see the mark it must be the case that it is being used by the owner, regardless of what it is used in association with or who is actually using it. So, any use, however small, by any other entity creates greater opportunity for confusion. Policing in these cases becomes particularly important.
The Lucasfilm case is a great example of this. It demonstrates 3 good reasons why enforcement is so vital for trademark owners, irrespective of who the infringer might be.
First of all, unauthorized use of a trademark creates confusion as to source. Confusion lessens the marks distinctiveness and its effective operation as a trademark. If your competitors or others in the marketplace are using elements of your brand or trademark without your permission, eventually, your consumers will no longer associate your mark with YOU.
Secondly, use of one’s trademark without permission can easily result in dilution or the weakening of the integrity of your brand.
Third, and finally, in spite of perhaps wanting to show support for good causes, allowing unauthorized use of a trademark, even for altruistic reasons, will result in a loss of control. If a trademark owner allows one organization or event to use their intellectual property without permission and license, they exponentially increase their risk of losing their foothold in their marks. This loss of control will ultimately diminish licensing power and the ability to hold others accountable for infringement.
Lucasfilm’s choice to “strike back” was both necessary and part of a solid trademark enforcement and brand protection tactic. Whether you are a large company with numerous trademark portfolios or a small owner operated business, it is always a good idea to strategize with an IP lawyer about how to best avoid confusion, maintain distinctiveness and preserve licensing power. Having good advice about enforcement is central to maintaining strong and distinctive trademarks.