Race for the Cure Between Public Relations and Trademark Law

Last summer, when I read about the Susan G. Komen Foundation’s aggressive enforcement efforts against other charities to protect its “FOR THE CURE” trademark used in breast cancer research, I thought back then that it could be problematic for the company.  Not necessarily from a legal perspective, but from a public relations one.  And that’s extremely important to keep in mind, because the sorts of issues the Komen Foundation are facing now are the things that keep trademark lawyers up at night.  And when I read about the Foundation’s continued efforts last month, the story wasn’t going to die so quickly.  Such is the nature of the internet.

Before you condemn the Komen Foundation, keep in mind that what’s smart from a legal perspective isn’t always the best PR strategy.  The 2 areas can at times be mutually exclusive.  I’ve had several instances over the years when advising clients that the way in which they’re using their trademarks could be problematic—just think back to trademarks that have become generic such as escalator, aspirin, and cellophane—to understand what I mean.

The companies which owned those marks failed to police and enforce the ways they were being used (both internally and by others), only to have the marks enter the English lexicon and become unprotectable.  Remember, it’s not VELCRO, but VELCRO brand hook-and-loop fastener.  So it’s not unusual for friction to exist between a company’s legal department and its marketing department, let alone its PR department.  What makes sense legally sometimes translates into a poor PR strategy.  And there’s no easy fix.

Just ask North Face when it pursued a teenager a couple of years ago who sold a line of clothing called “SOUTH BUTT.”  North Face’s cease-and-desist letter not only circulated throughout cyberspace, but as a result of the company’s enforcement efforts, the story garnered a great deal of media coverage—with the theme being that a big, bad company was “bullying” a teenage entrepreneur.  He garnered a lot of public support and sold a lot of clothes.  North Face eventually settled with him.  Like I said, it’s these sorts of stories that keep trademark lawyers up at night.  You’re damned if you do and damned if you don’t.

The Komen Foundation must—not should, may, or could—but must police the use of its trademark by others or else it risks losing rights in it.  That’s a legal question not open for debate.  And the Foundation is no different than many companies, such as Intel, which also vigorously protect their marks.  As to whether it’s being too aggressive by going after hundreds of smaller local cancer charities which incorporate some derivation of ”FOR THE CURE” into their marketing efforts, that’s both a legal and PR question, but when Steven Colbert makes fun of you like he did recently, you’ve got a PR problem.

Legally, how much enforcement is enough isn’t set in stone and is highly dependent on the facts of each case.  If a company is taking reasonable steps to notify potential infringers and demands that they cease-and-desist their use of the mark in question, that’s an important first step—which is what the Komen Foundation is doing.  Of course, whether they have to send out hundreds of letters to even small local charities trying to support cancer research in each and every instance is another matter, but such a strategy is sound from a legal perspective.   And deterrence is an important part of enforcement too.

From a PR perspective, however, raising money for cancer research is quite a sympathetic cause—more so than a kid selling SOUTH BUTT jackets.  And just because you have the legal right to do something doesn’t mean that you should.  Or at least exercise it to such a degree that it could cost the Foundation more down the road, especially a charity which only exists due to the good grace and generosity of others.  But I leave those questions to the PR experts.

---

This entry was posted in Intellectual Property and tagged brand management, cease and desist, Internet, litigation, trademark. Bookmark the permalink. Follow any comments here with the RSS feed for this post. Both comments and trackbacks are currently closed.