The line between trademark bullying and sensible brand protection is often fine, but you do not have to be a genius — or even a lawyer — to know where to draw it.
The US Patent and Trademark Office defines trademark bullying as the practice of litigating in a way that goes “beyond a reasonable interpretation of the scope of the rights granted to the trademark owner”.
Concerned that some deep-pocketed big businesses were using abusive trademark suits to expand their market share without cause, the patent office published a study into the matter a few years ago and recommended better education of small firms about trademark law. In other words, it put the responsibility for preventing abuse on those mostly likely to be victims — a common response to bullying.
There are few signs that it made any difference, because aggressive brand protection remains routine for big American companies. However, there is a difference now. The growth of social media is enabling smaller companies to hit back and win public sympathy.
Take the case of Under Armour, an American company that edged out adidas, a German competitor, last year to claim the No 2 sportswear position in the US behind the mighty Nike, and which seems to be hellbent on suing any company with the word that resembles “armour” in its name. Its latest victim is a tiny apparel company based in Maryland named Armor & Glory.
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Terrance Jackson launched Armor & Glory in 2013 after being dismayed to find that so many of the clothes available in the shops for this three-year-old son were covered in skulls and crossbones. As a devout Christian, he wanted to offer an alternative. He said that he was not so much seeking to get rich as to provide “inspirational apparel” for God-fearing people.
The name Armor & Glory came to him in his sleep, as if in a direct message from God, he said. So too did his company slogan: “Put on God’s armor and receive his glory.”
Mr Jackson was astonished to receive a legal letter from Under Armour. He pointed out that his logo bore no resemblance to Under Armour’s and emphasised his own use of the American spelling.
“It’s not like we are selling hundreds of thousands of units,” he said. “In the history of this company, we have not come anywhere close to $100,000 in revenue,” he said, adding that Under Armour’s action ran counter to the American dream. “America was built on small businesses having the opportunity to develop things and offer them to the world,” he said.
Under Armour knows this only too well. It also sprang from small beginnings, having been founded in 1996 by Kevin Plank, a former University of Maryland football player, in his grandmother’s basement in Washington. The company has annual sales of about $3 billion.
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This David and Goliath battle has generated negative attention for Under Armour on Twitter and other social media. It has also served to highlight the company’s aggressive track record on trademark protection. It has previously sued BodyArmor, a sports drink company, Salt Armor, a fishing apparel firm, and Ass Armor, a maker of snowboarding shorts, according to The Washington Post. It has also gone after the big boys, suing Skechers, the shoemaker, in February for a commercial that it claimed “slavishly copies” one of its own ads, with “similarly lit, close-up images . . . of athletes in cavernous ware-houses . . . taking on rigorous physical workouts”.
It sued Nike in 2013 for using the words
“I will” in a campaign, saying that its bigger rival had copied Under Armour’s “I will what I want” campaign.
In the case of Armor & Glory, Under Armour said that because it had made a significant investment in its brand, it would “take all necessary actions to protect our intellectual property rights and the interests of our consumers and shareholders”.
The sight of a big brand going after a small business with a case of dubious merit is not an edifying one. And you have to wonder in these days of Twitter and Instagram how helpful it is, not least because Mr Jackson has seen a small spike in sales since the dispute became public.
It seems that some big boys just can’t stop themselves. This week the website Retail Dive highlighted the case of the restaurant chain Chick- fil-A, which lodged a cease-and-desist order against a small Vermont-based company making “Eat Your Kale”
T-shirts and bumper stickers, claiming that it was harming its “Eat Mor Chikin” slogan. Eat Your Kale ignored the threat and trademarked its own brand. It also capitalised on the issue with a T-shirt reading: “Kale Isn’t Chicken”. Chick-fil-A, meanwhile, attracted heaps of ridicule.
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It doesn’t have to be like this, and big brands can even earn kudos for trademark protection lawsuits if they play it right. Last week Michael Jordan, arguably the greatest basketball player of all time, who still earns about $90 million annually, years after hanging up his boots, was awarded $8.9 million after taking legal action against a supermarket chain that used his name in an advertisement without his permission.
Jordan said he hoped that the size of the award would deter others from trying to capitalise on someone else’s identity.
However, in a demonstration of the brilliance of brand Jordan, he added: “The case was not about the money as I plan to donate the proceeds to charity. It was about honesty and integrity.”
It’s hard to argue with that.
Alexandra Frean is US Business Editor of The Times