Here's some info I requested.
I appreciate your e-mail and understand that you are frustrated about Volkswagen of America’s (“VW”) position on policing and enforcing its trademark rights as afforded by Federal law (the Lanham Act). In an attempt to inform you about VW’s position, I am writing this e-mail.
Below is an article written for Volkswagen explaining to the public why Volkswagen polices its trademarks in the way it does. The text of the article is set forth below and hopefully answers your concerns. If you have any questions, please feel free to call me.
“According to a number of surveys, the Volkswagen logo is one of the most recognizable trademarks in the world. Volkswagen takes a tremendous amount of pride in this, and considered its trademarks to be among the most valuable assets. In an effort to both enhance and protect the value of the Volkswagen name and image, Volkswagen is constantly engaged in both promoting its trademarks and policing their use to ensure that persons and businesses authorized to do so use the trademarks in an acceptable manner.
Because of the cachet of the world-famous Volkswagen name, thousands of independent businesses and people make a living from or pursue a hobby related to Volkswagen products and services. Unfortunately, many of these businesses improperly attempt to affiliate themselves with Volkswagen by using Volkswagen trademarks and trade dress (for instance, the depictions or photographs of Volkswagen’s distinctively shaped vehicles) in advertising their products and services. Volkswagen appreciates the enthusiasm these people have for Volkswagen products. Volkswagen in no way wants to put these companies out of business, or prevent these businesses from advertising their products and services in a manner that is fair under Federal and state trademark laws. Volkswagen cannot, however, allow these businesses to use Volkswagen’s trademarks and trade dress in a way that creates the appearance that these businesses are affiliated with, sponsored by, or approved by Volkswagen when they are not.
Volkswagen’s trademarks and trade dress serve several important purposes. First, seeing the distinctive Volkswagen logo on a product or business is an immediate indication that the product or business is authorized by Volkswagen. Second, a product bearing a Volkswagen trademark is an indication that the product is of high quality and has passed Volkswagen’s strict quality control procedures and inspections. Third, placing a Volkswagen trademark on a product indicates that Volkswagen, or an authorized agent, is the source of the product, and that the product is genuine and not counterfeit. When the public purchases a product or service sold under a Volkswagen trademark, the public has every right to expect that the product or service is the “real thing.” All of this, in turn, contributes to the value of Volkswagen trademarks as legitimate and important business assets of the company.
At times Volkswagen enthusiasts question why Volkswagen is so adamant about policing its trademarks and preventing unauthorized uses or infringements of them. It is quite common for someone who is using a trademark without permission to say, “I’m giving Volkswagen free advertising, so why does Volkswagen care?” Volkswagen cares because it is important that Volkswagen be able to exercise control over the quality of the product or service bearing Volkswagen’s trademarks. If a disreputable business sells an inferior product or service that uses a Volkswagen trademark, the poor quality of that product or service reflects on Volkswagen. A person who is disappointed by that poor product or service will not take the time to determine whether Volkswagen in fact authorized the use of its trademarks. They will, probably rightly, assume Volkswagen to be the ultimate source of their disappointment and may transfer their loyalty to a competitor.
So, what trademarks and symbols are included in Volkswagen’s “stable” of trademarks? Among others, Volkswagen claims trademark rights in the name “Volkswagen;” in the initials “VW;” in its distinctive logo; in the names and model numbers of Volkswagen automobiles; in its advertising slogans; in the design of the classic Beetle; and in the design of the New Beetle. In addition, Volkswagen has trade dress rights in the distinctive shapes of its vehicles.
As a result, if a business not affiliated with Volkswagen uses any Volkswagen trademark, whether through the use of photographs, depictions or silhouettes, or any confusingly similar variation thereof, without Volkswagen’s express, written consent, then that business is violating Federal and state trademarks laws. That business is also misleading the public into believing that such business is affiliated with Volkswagen. It is also not sufficient for a business to state that it is not affiliated with Volkswagen but continue to use Volkswagen trademarks without permission. The business is still misappropriating the goodwill and reputation developed by Volkswagen, and attempting to capitalize on or profit from Volkswagen’s goodwill and reputation. Even with the best of intentions, unauthorized use of another company’s trademark is against the law and misleading to the general public.
Unauthorized and infringing uses of Volkswagen trademarks come in many disguises. Examples of cases in which Volkswagen has successfully pursued infringers include the following: (1) businesses that use Volkswagen trademarks in their business name such as “John Doe’s Volkswagen Repair;” (2) businesses that use Volkswagen trademarks in advertisements, including phone book advertisements; (3) businesses that place Volkswagen trademarks or trade dress on products such as shirts, coffee mugs, key fobs, etc.; and (4) businesses that use Volkswagen trademarks in their Internet domain names, such as “VW.NET,” “NEWVWBEETLE.COM,” “ANYVWPART.COM,” and “VOLKSWAGON.COM.”
Volkswagen’s trademark infringement program has been in place for almost as long as Volkswagen has sold cars in the U.S. This is generally way it works: when it comes to our attention that a business is using a Volkswagen trademark without permission that business can expect to receive a letter from Volkswagen, or an agent acting on behalf of Volkswagen, requesting that the business cease and desist from its infringement. Ultimately if the business refuses to cease and desist its infringement, Volkswagen will file a trademark infringement lawsuit, seek an injunction to enjoin continued infringement and seek monetary damages. It is not Volkswagen’s intention to close such businesses, but simply to stop the infringement.
Although a business not affiliated with Volkswagen is not permitted to use the Volkswagen trademarks and trade dress in advertising the business’ products and services, such a business may advertise that its products and services relate to Volkswagen vehicles or products. The name “Volkswagen” may be used to inform the public that the business offers goods or services related to Volkswagen vehicles if the word is used in a factual statement, the registered trademark symbol (®) is used and the word “Volkswagen” is not highlighted or set apart in any manner through the use of a larger typeface, distinctive typographical style, script, color, shading, placement or otherwise. For example, a business can advertise, “We service Volkswagen® vehicles,” or “Volkswagen® parts sold here.” (In the latter case, it is permissible as long as the Volkswagen parts sold are genuine Volkswagen parts, purchased through an authorized Volkswagen dealer or distributor.)
Other than the permissible uses described above, use of Volkswagen trademarks is impermissible unless licensed. Use of Volkswagen trademarks on products such as clothing, toys, pens, or vehicle accessories requires a license from Volkswagen AG in Germany. Volkswagen of America is planning on providing information as to how to apply for such a license on its website,
www.vw.com, in the future. In addition, in response to requests from enthusiasts and clubs, Volkswagen of America will be offering a license for certain limited electronic uses of certain Volkswagen trademarks. The current plan is to permit application for a limited license through
www.vw.com to use certain trademarks on an enthusiast or club’s website or in a domain name. The use will be monitored to ensure that it complies with Volkswagen of America’s requirements, and the license will be revoked if the use does not comply. This will give Volkswagen enthusiasts the chance to express their passion for Volkswagen products without risking a cease and desist letter. Stay tuned to
www.vw.com for further developments.
Volkswagen genuinely hopes the public understands the need for Volkswagen to police and enforce the proper use of its trademarks and trade dress. To protect the value of its trademarks, Volkswagen is obligated to object to and pursue unauthorized uses of its trademarks and trade dress, even if the use of the trademark or trade dress does not appear offensive or objectionable. If Volkswagen does not do so, it may be deemed under the trademark laws to have abandoned its trademark rights. We thank you for your understanding and support.”
I hope that this article is informative to you and helps you understand the importance that VW places on protecting its trademarks and trade dress. If you have any further questions regarding VW’s position in this matter or about how your product is infringing, please feel free to contact me.
