What we Learned From the Specialized Trademark Incident
Part 3 – The Internet Determines Whether Marks are Confusingly Similar.
In my last post, I followed upon the discussion of the Specialized trademark saga. That saga provides another important pointer for trademark practitioners.
A trademark can only have one owner — the owner is the exclusive source or quality control agent of the goods sold under the mark. (That owner may in turn license others if the owner is monitoring the quality of goods sold under the mark. So in the case here, ASI was assumedly monitoring the quality of Specialized bikes sold under the Roubaix mark.) This is an important point, because it puts a trademark owner in a difficult position.
If a trademark owner allows others to use confusingly similar variations of its mark, it can lose all of its rights to its brand. Hence, when a trademark owner sees infringement going on, that owner cannot just sit on its hands — it has to stop the infringement or risk losing its mark rights. This means that in close cases you, as a mark owner, need to enforce your rights. Well, at least, that used to be the rule.
Determining if one trademark infringes another hinges on whether there is a likelihood of confusion between the marks. Unfortunately, determining whether there is a likelihood of confusion between marks involves one of those multi-factor inquiries business owners hate so much. Multi-factor tests mean bringing in the costly, blood-sucking attorneys like me to analyze mark rights. This often gets expensive as determining if these factors exist frequently involves sifting through a lot of facts about the history, meaning and usage of the terms involved. If the mark is litigated, going through the analysis may take a court many pages of analysis covering all of the factors.
If we learned anything from the Specialized case, it is that uncovering the pertinent facts and going through the traditional likelihood of confusion analysis in a considered fashion is a needless exercise. Instead, the Internet can decide likelihood of confusion faster and more accurately. Apparently, over the last twenty years, trademark infringement specialists have arisen from the ether and have taken residence on the Internet. Without encumbering himself or herself with analysis of any of the traditional points of infringement analysis, the Internet surfer can now instantly adjudicate mark rights and type in a verdict. Traditional factors such as similarity of the marks and similarity of the parties’ goods have been replaced with such factors as relative wealth disparity among the parties and the accused’s military service. In a matter of minutes, the Internet can decide if likelihood of confusion exists and simultaneously determine that companies like Specialized are trademark bullies. Once the direction of the prevailing Internet winds are determined, then a Specialized can be judged in more mainstream circles for asserting its rights and be told that attempting to enforce its rights is “unnecessary.”
Trademark law and cycling do not frequently intersect. When they do, the results are interesting.