If you needed another reason to take action against a third party using your trademark – and you shouldn’t need another reason – consider the Red Hen restaurant. Which Red Hen? That’s the point.
As everyone by now knows, White House press secretary Sarah Huckabee Sanders posted a tweet over the weekend stating:
Last night I was told by the owner of Red Hen in Lexington, VA to leave because I work for @POTUS and I politely left. Her actions say far more about her than about me. I always do my best to treat people, including those I disagree with, respectfully and will continue to do so.
To say that this incident touched off a firestorm would be a massive understatement. Many were outraged by what they perceived as a completely unjustified act of exclusion, and contacted the Red Hen restaurant to express their views in the form of harassing calls, fake orders, death threats and also (one would hope) expressions of displeasure delivered in a courteous manner. Unfortunately, these critics did not always contact the right Red Hen.
For example, complaints started pouring in at the Red Hen restaurant in Swedesboro, New Jersey, even though it was hundreds of miles away. Angry comments were delivered by phone, by Yelp, and on the restaurant’s Facebook page. In desperation, the New Jersey restaurant posted this message on Facebook:
THE RED HEN IN SWEDESBORO, NEW JERSEY IS IN NO WAY AFFILIATED WITH THE RED HEN IN VIRGINIA.
We are an independent, family owned business who happens to share the same name.
Kindly check your facts before you erroneously defame an innocent business on Facebook in an attempt to destroy their business where they welcome all, irrespective of their race, religion, views or opinions.
Wishing all a safe and happy weekend!
You would think that such a message would discourage further Facebook posts . . . but you would be wrong. Apparently, fired up internet users don’t always read the fine print, and the angry posts continued. Elizabeth Pope, Operating Manager of the Red Hen in Swedesboro, told NJ.com, “People have no idea. They’ve dropped our rating from a 4.8 stars to three-point-something. People need to check the facts and do research before they make comments and try to ruin a small business.”
What is the lesson for trademark owners? Be on the lookout for unauthorized uses of your trademark and shut them down wherever possible. If someone has the same or a confusingly similar trade name as you and you let it go, the public may believe (mistakenly) that you are affiliated with them or responsible for their actions.
Of course, this is easier said than done. Your options will depend on whether you are the senior or junior user, as well as the geographic scope of your rights. While a deep dive into these topics is beyond the scope of this blog post, here are some practical tips:
- Pick a unique mark. A made-up word, or an unexpected combination of words, is best. This is the single most important thing you can do to protect yourself against the possibility that someone else will adopt the same mark and destroy your goodwill. Before you adopt a mark, it is definitely worth doing a trademark search or at the very least spending 5 minutes on Google to make sure no one else is using it.
- Apply for a federal registration. If you are providing goods or services across state lines, you can apply for a federal trademark registration, which will give you nationwide priority as of the application date. Although you may not be able to immediately enforce your trademark rights against a later comer in a geographic region that is remote from yours, that party is on “borrowed time” and must cease using its mark when you are ready to enter that market with your registered mark. Simply pointing this out in a demand letter often yields a positive result.
- Know when you can, and when you can’t, enforce your rights. As a general matter, you cannot enforce your rights against a party who started using the trademark before your own priority date. That is why picking a unique mark in the first place is so important (see #1 above). In enforcing against junior users, you need to consider whether your mark is protectable, whether there is a likelihood of confusion, and whether your rights extend into that geographic area. Here, a federal registration is a powerful tool (see #2 above).
In short, a skilled trademark attorney can help you design an enforcement strategy that is commensurate with your rights, your business needs, and your budget.
The odds of your being the next Red Hen are admittedly small, but do you really want to take that chance?
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