Velcro Companies: Fighting Trademark Misuse With a Song
In an effort to protect valuable intellectual property, some companies are getting more creative in their approaches. UGG Holdings Inc. uses dedicated…
September 25, 2017 at 06:56 PM
3 minute read
The original version of this story was published on Law.com
In an effort to protect valuable intellectual property, some companies are getting more creative in their approaches. UGG Holdings Inc. uses dedicated social media accounts to educate consumers about counterfeits, for example.
Velcro Companies is the latest to adopt an unconventional approach to prevent the misuse of the VELCRO™ trademark. The education initiative, announced Monday, relies on an original song to spread the word about proper trademark attribution. “You call it Velcro, but we're begging you, this is a *bleeping* hook-and-loop,” those in the music video sing, in an effort to communicate how to use the mark.
The company has long provided guidelines on proper usage of the VELCRO™ trademark, such as only using it in connection with genuine products and always using the mark as an adjective, not a noun or verb. This educational campaign expands on those efforts by way of the video and use of social media platforms and advertising. It's about spreading the word and creating shareable content that consumers can absorb, Julie Barry, director of global brand at Velcro Companies, said in a recent interview with Corporate Counsel.
And it's of course about preventing the mark from losing protection. Like any company with a popular brand name, making sure the VELCRO™ trademark is used properly is critical, Alexandra DeNeve, legal consultant to Velcro Companies, said. “I think that any brand owner who has become famous … and is associated in particular with a product like this, has to be concerned about descriptive uses of their mark,” she explained. “And, of course, the generic defense is one of the defenses available to infringers, so it's something you always have to be aware of.”
DeNeve added: “Every brand owner has to ensure that their trademark is used properly and attributed properly to avoid descriptive and generic misuses of their mark.”
For Velcro Companies, this has historically included a trademark enforcement regime with some of the more traditional brand protection mechanisms. “We legally enforce our trademark every day against infringers in the marketplace worldwide via cease and desists,” DeNeve said. “We also engage with our customers on a daily basis all over the world to ensure that they are using and attributing the mark properly.” She added that the company relies on brand protection provider MarkMonitor Inc.
This latest campaign complements those efforts, DeNeve said. “The more people are aware of the brand, the more people are aware of how the trademark should be used, the more people are aware that there's a distinction between VELCRO™ brand hook-and-loop and other third-party hook-and-loops. … It's a way to enforce the mark, [without] doing it [through legal action],” she noted. “[We're] engaging people to help us protect the mark.”
Velcro Companies recognized the need to approach the trademark education campaign in a way that would appeal to their target audiences, such as millennials and do-it-yourselfers, DeNeve said. “And I believed that we had to make the message something more than just sort of the dry, straightforward legal message,” she added.
Going forward, the legal and brand departments will work together in managing the social and ad campaigns around the initiative to ensure consumers are getting the message, according to DeNeve. And then, of course, she said, legal will manage the way the mark is used in the marketplace.
“In many ways, legal is also a brand ambassador with respect to this campaign,” she observed.
Contact Jennifer Williams-Alvarez at [email protected].
This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.
To view this content, please continue to their sites.
Not a Lexis Subscriber?
Subscribe Now
Not a Bloomberg Law Subscriber?
Subscribe Now
NOT FOR REPRINT
© 2024 ALM Global, LLC, All Rights Reserved. Request academic re-use from www.copyright.com. All other uses, submit a request to [email protected]. For more information visit Asset & Logo Licensing.
You Might Like
View AllBen & Jerry’s Accuses Corporate Parent of ‘Silencing’ Support for Palestinian Rights
3 minute readShareholder Activists Poised to Pounce in 2025. Is Your Board Ready?
Regulatory Upheaval Is Coming. How Businesses Prepare and Respond Will Separate Winners and Losers
AT&T General Counsel Joins ADM Board as Company Reels From Accounting Scandal
Trending Stories
- 1Judiciary Law §487 in 2024
- 2Polsinelli's Revenue and Profits Surge Amid Partner De-Equitizations, Retirements
- 3Environmental Fines: Texas Secures Over $100M From Petrochemical Processor TPC Group
- 4US Law Firm Leasing Up Nearly 30% Through Q3, With a Growing Number of Firms Staying in Place
- 5SEC Targets Rising Crypto Financier in $115 Million Securities Fraud
Who Got The Work
Michael G. Bongiorno, Andrew Scott Dulberg and Elizabeth E. Driscoll from Wilmer Cutler Pickering Hale and Dorr have stepped in to represent Symbotic Inc., an A.I.-enabled technology platform that focuses on increasing supply chain efficiency, and other defendants in a pending shareholder derivative lawsuit. The case, filed Oct. 2 in Massachusetts District Court by the Brown Law Firm on behalf of Stephen Austen, accuses certain officers and directors of misleading investors in regard to Symbotic's potential for margin growth by failing to disclose that the company was not equipped to timely deploy its systems or manage expenses through project delays. The case, assigned to U.S. District Judge Nathaniel M. Gorton, is 1:24-cv-12522, Austen v. Cohen et al.
Who Got The Work
Edmund Polubinski and Marie Killmond of Davis Polk & Wardwell have entered appearances for data platform software development company MongoDB and other defendants in a pending shareholder derivative lawsuit. The action, filed Oct. 7 in New York Southern District Court by the Brown Law Firm, accuses the company's directors and/or officers of falsely expressing confidence in the company’s restructuring of its sales incentive plan and downplaying the severity of decreases in its upfront commitments. The case is 1:24-cv-07594, Roy v. Ittycheria et al.
Who Got The Work
Amy O. Bruchs and Kurt F. Ellison of Michael Best & Friedrich have entered appearances for Epic Systems Corp. in a pending employment discrimination lawsuit. The suit was filed Sept. 7 in Wisconsin Western District Court by Levine Eisberner LLC and Siri & Glimstad on behalf of a project manager who claims that he was wrongfully terminated after applying for a religious exemption to the defendant's COVID-19 vaccine mandate. The case, assigned to U.S. Magistrate Judge Anita Marie Boor, is 3:24-cv-00630, Secker, Nathan v. Epic Systems Corporation.
Who Got The Work
David X. Sullivan, Thomas J. Finn and Gregory A. Hall from McCarter & English have entered appearances for Sunrun Installation Services in a pending civil rights lawsuit. The complaint was filed Sept. 4 in Connecticut District Court by attorney Robert M. Berke on behalf of former employee George Edward Steins, who was arrested and charged with employing an unregistered home improvement salesperson. The complaint alleges that had Sunrun informed the Connecticut Department of Consumer Protection that the plaintiff's employment had ended in 2017 and that he no longer held Sunrun's home improvement contractor license, he would not have been hit with charges, which were dismissed in May 2024. The case, assigned to U.S. District Judge Jeffrey A. Meyer, is 3:24-cv-01423, Steins v. Sunrun, Inc. et al.
Who Got The Work
Greenberg Traurig shareholder Joshua L. Raskin has entered an appearance for boohoo.com UK Ltd. in a pending patent infringement lawsuit. The suit, filed Sept. 3 in Texas Eastern District Court by Rozier Hardt McDonough on behalf of Alto Dynamics, asserts five patents related to an online shopping platform. The case, assigned to U.S. District Judge Rodney Gilstrap, is 2:24-cv-00719, Alto Dynamics, LLC v. boohoo.com UK Limited.
Featured Firms
Law Offices of Gary Martin Hays & Associates, P.C.
(470) 294-1674
Law Offices of Mark E. Salomone
(857) 444-6468
Smith & Hassler
(713) 739-1250