One data point that must be considered when reviewing trademark name search results is who owns the trademarks revealed in the search results. The importance of this issue is demonstrated in a dispute between The University of Pittsburgh and Voodoo Brewery. Voodoo Brewery received a nasty gram (that’s the legal term for cease and desist letter) from Pitt over its use of the image of the Cathedral of Learning and script H2P lettering on the packaging. The H2P stood for “Hail to Pitt.”
Pitt owns a Supplemental Registration for H2P for “magnets” and “lapel pins.” They also owned a HAIL TO PITT & Cathedral Design registration similar to the design appearing on the beer cans, but Pitt allowed the registration to expire. Beer and magnets or lapel pins are not related goods. So why would Pitt make an issue of H2P for beer?
The unfortunate reality is that some organizations believe they have to be a hammer. And when you are a hammer, everything looks like nail. But the reality is that even if you think you are a hammer, everything does not have to be a nail. The worst advice a trademark owner can get from a trademark attorney is that you have to enforce your rights at all costs or risk losing your rights forever. While trademark rights are dynamic, you do not have to enforce them against anyone and everyone.
In this case, Pitt’s decision to hammer Voodoo Brewery turned into a bit of a PR nightmare because the brewmaster is a University of Pittsburgh alumnae. The beer he created was a tribute to his alma mater. But rather than fight Pitt over the name, Voodoo Brewery rebranded the beer to NON-TRADEMARK INFRINGEMENT ALMA MATER IPA. This was a brilliant way to address the questionable trademark claims made by Pitt.
Another thing to learn from this case is that as a defendant you do not have to fight at all costs either. Voodoo Brewery made a business decision to rebrand rather than fight. Never lose sight of the business decision when dealing with trademark issues. The minute your emotions take over what should be a business decision is the time you will end up spending much more on legal fees than you probably should.
Trademark name search results may reveal trademark owners that deserve more investigation before you can clear the mark.