An online enthusiast's site for the Mini brand from BMW has been placed under legal assault by BMW for trademark infringement. According to Mark Ferguson, the founder of MiniCooperOnline (MCO), BMW basically wants him out of business, as it wants to tightly control any commercial ventures associated with the Mini (including the enthusiast aftermarket). Basically, he can run the site as a hobby, they say–or run it without the word “Mini” in its name.

BMW may well be within its rights, as deliniated by the DMCA at least. And commercial publications that use the name of a trademarked product in their name (like Visual Studio Magazine, Nintendo Power, Playstation Magazine) typically have to negotiate a license in order to do so.

But MCO does have some legs to stand on here. Other “independent” online publications have been able to use brand names in their titles, since they have established themselves as independent . Take Microsoft Watch, Mary Jo Foley's newsletter and weblog that covers Microsoft's maneuverings. It runs a legal disclaimer: “Microsoft Watch is an independent publication, not affiliated with or authorized by Microsoft Corporation.
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BMW's legal team also seems to be muddying the waters as far as what they really hope to achieve, by dictating what domain names Ferguson can use, and then retracting those names in the next breath.

And they may just be shooting themselves in the foot in the process. The move just may piss off loyal owners and reduce BMW's sell-through of parts, and leave a bad taste in the mouths of many who would have been otherwise part of a grassroots marketing machine.

It's ironic, because BMW has been trying to engineer a deliberate grassroots approach to marketing the Mini from the beginning, focusing on “street teams” and other forms of nontraditional marketing to build early demand. Now, they've let loose the legal hounds to prevent anyone else from driving that demand and profiting from it. But trademark protection is growing weaker daily, and BMW might just completely hose the Mini brand in the process of bullying alleged infringers.

After all, the term “mini” has been widely used generically. Maybe if enough people start calling smaller versions of their products “Mini”, the value of the brand name will be diluted and the trademark will be placed on questionable ground. Maybe BMW will find itself in the same position as Fox News, with its trademark in danger of being snatched away from it by the court.