Trademark Infringement – Creative Approaches to Cease and Desist Communications

Season 3, Episode 12 – If your trademark is infringed upon, you might send a cease and desist communication to the infringer. But in this day of lightning-fast social media and online posting, companies have been burned when their overly-aggressive cease and desist communications go viral. To avoid this risk, some have turned their cease and desist communications into marketing campaigns, social media promotions, or even just initial gentle words that only escalate if necessary. JDSA attorney Sally White explores this less traditional model with some entertaining examples, in Creative Approaches to Cease and Desist Communications

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Transcript

Announcer:  This is JDSA's Law Talk. This is the program that gives you the straight facts on our laws and how they affect your everyday personal and professional life.

Host:  Branding is at the core of all business, so it makes sense that companies should do all they can to protect it. But what happens if someone else uses part of that brand? Perhaps they use a similar logo or a similar sounding name of a product. Assuming it's done without permission, where do you begin, what are your rights, and what can you expect as a result? In this episode of JDSA's Law Talk, trademark attorney and partner Sally White is here to discuss trademark infringement, creative approaches to cease and desist communications. Sally, this is important, a brand is a business's face and you have to protect that face, yeah?

Sally:  Exactly, and today, we'll talk about creative ways that companies can attempt to protect their businesses' face.

Host:  The cease and desist doesn't have to be a blunt instrument at all times, is what you're saying, right?

Sally:  Exactly.

Host:  All right. We'll talk about that more. It's coming your way next right here on JDSA's Law Talk.

Announcer:  You're listening to JDSA's Law Talk, brought to you by JDSA Law, one of the largest full-service law firms in North Central Washington.

Host:  If you have a question about today's topic or a topic suggestion for a future episode, email us at lawtalk@jdsalaw.com. Welcome back to JDSA's Law Talk, talking with featured attorney Sally White about trademark infringement and creative approaches to cease and desist communications. Before we get into that though, Sally, let's talk about the basics. Generally speaking here, what is a trademark infringement?

Sally:  So, the technical definition is the unauthorized use of a trademark or confusingly similar mark on another party's goods or services. On a very basic level, trademark rights arise from actual use of a mark, either a word or a design, in commerce. So even if you have no state or federal registration covering that mark, if you are using a mark in commerce and another person or company is using a mark that looks, sounds, or may cause confusion to a reasonable consumer with your mark, then you may have a case for trademark infringement.

Host:  So for instance, best to stay away from swooshes for your particular logo.

Sally:  It might make sense.

Host:  It might. So what's the first step? What should I do if I think my trademark is being infringed upon?

Sally:  First of all, you should talk with an experienced trademark attorney, and your next step would be to put it in writing. Start with a cease and desist letter.

Host:  Okay, that word, that phrase, cease and desist letter, feels very formal. So, let's talk about this in greater depth. What goes into the cease and desist letter?

Sally:  Well, the cease and desist letter is quite formal generally. It provides a formal request for the recipient to cease the infringing activities. So typically, the letter will say who you are, it will explain the relevant trademark rights that you claim to own, it'll explain how the adverse party is using your mark or a confusingly similar mark in an unauthorized manner, and it will ask the recipient to stop. Importantly, by sending this letter, you are not waving any rights to pursue legal action if the letter is not successful.

Host:  All right. This is serious, but it doesn't necessarily need to come down like a sledgehammer though, that's the important part. There are creative ways you can do this sort of thing. We will talk about that coming your way next, right here on JDSA's Law Talk.

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Host:  If you have a question about today's topic or a topic suggestion for a future episode, email us at lawtalk@jdsalaw.com. Welcome back to JDSA's Law Talk, I'm Clint Strand, talking to featured attorney Sally White about creative approaches to cease and desist communications. So now that we know what these, cease and desist communications are, let's talk about getting creative. Are there options to a formal and litigious cease and desist letter? Do you have to throw down the sledgehammer?

Sally:  Well, you don't. Keep in mind that the recipient of the letter may have no idea that they are infringing on your mark. So, the best approach may be to soften your tone first, pick up the phone, or if you have to send a letter, send a "We're sure you didn't mean to do this but we actually own this mark" type letter before threatening to go thermonuclear. Remember, you can always send a follow-up, more strongly worded letter if necessary.

Host:  Also, we do live in the age of social media. I'm sure that shapes some companies' responses.

Sally:  Absolutely, and in fact, the risk of the lightning fast online publication of any letter received means that you may want to be cautious with the tone and the language used in your letter.

Host:  If you get too snarky, it could come back to bite you, right?

Sally:  Exactly. For example, in 2013, Starbucks, the coffee giant, became the subject of negative publicity after sending a strongly worded cease and desist letter to a small brew pub in Missouri after a customer referred to one of its stout beers as a "Frappuccino" on a beer review site.

Host:  Now, this isn't even the company mentioning this. This is someone reviewing the beer that gave this term.

Sally:  Exactly. So Starbucks sent a letter claiming ownership of the Frappuccino mark in connection with its coffee beverages and demanded that the brew pub cease and desist all use of the term Frappuccino in connection with its products or with its brewery, and Starbucks also demanded that the brew pub notify the beer review site to remove the referenced listing from its website, and Starbucks demanded that the brew pub respond in writing to Starbucks by a set date that was bolded in the letter.

Host:  So, there's Goliath. How did David respond?

Sally:  The owner of the brew pub, in a tongue-in-cheek fashion, which is all of this is publicly available online if you want to Google it, you can see it, the owner responded to Starbucks in writing as demanded, stating that they never thought their beer drinking customers would confuse the beer coming out of their taps with coffee from the Starbucks "on every corner of every block in every city" and they enclosed with the letter a check for six dollars "for the full amount of profit gained from the sale of those three beers."

Host:  Meanwhile, here's some crow for you to eat. Oh my gosh, what else?

Sally:  The letter asked for the six dollars to go towards paying the legal fees for sending the letter, concluding, "us small business owners need to stick together."

Host:  I'm sure some people shared that.

Sally:  Well, it went viral. Starbucks' letter and the brew pub's response went viral. You can find both online, causing a fair amount of fun being made at Starbucks' expense.

Host:  And well-deserved. But let's turn this around a little bit here. If you are a corporation, can you turn your cease and desist letter into a marketing campaign, something that actually benefits you?

Sally:  You can. There have been several highly publicized examples. Example one, in fall 2017, Netflix sent a cease and desist letter to an unauthorized Stranger Things pop-up bar in Chicago. Now, let me read this to you, it's that good.

Host:  Okay.

Sally:  The letter reads, "Danny and Doug, my walkie-talkie is busted, so I had to write this note instead. I heard you launched The Stranger Things pop-up bar at your Logan Square location. Look, I don't want you to think I'm a total wastoid and I love how much you guys love the show. Just wait until you see season two. But unless I'm living in the Upside Down, I don't think we did a deal with you for this pop-up." The letter continues to kindly request the pop-up not extend beyond its six-week run ending in September and that the bar reach out to Netflix for permission if they plan to do something like this ever again. Ultimately, the letter was well-received from a marketing perspective when it went viral.

Host:  So, wait a minute, let's go back for a second because I think this is important with this cease and desist letter. I think people think cease and desist letters mean you have to stop doing something right now. An option for you, as someone sending that letter, is you can give someone options like Netflix did with this pop-up bar.

Sally:  Exactly. Offering a reasonable transition time for the offending party to cease the alleged infringing use is a kind way for a company to approach cease and desist communications, and it's a more realistic way because it's unlikely that the recipient of that communication is going to be able to immediately cease use. If that use is on a product or in some print publication, there may need to be a transition time.

Host:  All right, so what's another example where marketing and legal work go hand-in-hand on making something viral?

Sally:  Well, this one's pretty funny. In late 2017, Anheuser-Busch, who owns Budweiser, sent a medieval messenger to deliver a cease and desist letter communication to a brewery in Minneapolis, Minnesota, for naming an IPA after the Dilly Dilly nonsensical catch phrase in a Bud Light commercial. Anheuser sent a scribe who showed up in medieval attire and read a cease and desist letter from a scroll in front of the brewery while being filmed in the theme of its Dilly Dilly commercials, noting "Let it be known that we believe that any beer that is shared between friends is a fine beer indeed and we are truly flattered by your loyal tribute. However Dilly Dilly is the motto of our realm, so we humbly ask that you keep this to a limited edition, one-time only run." The letter concluded by offering two tickets to the Super Bowl to two of the brewery's employees.

Host:  That's fantastic. Talk about turning what could've been conceived as a negative into a big positive.

Sally:  Exactly, and it was very well-received online. A lot of consumers thought that was a hilarious way to approach an issue that potentially could have turned into a litigation.

Host:  Now, that's with a beer company contacting another beer company. Do you have an example of a company with a well-regarded mark or trademark contacting another person that's not doing the same thing, but still trying to play off that visual cue?

Sally:  Right. Well, for some reason, all of my examples are alcoholic beverages. In 2012, an author published a novel with a cover featuring a play on a well-known Jack Daniels whiskey label. Jack Daniels sent a polite cease and desist letter noting, "We are certainly flattered by your affection for the brand, but if we allow uses like this one, we run the very real risk that our trademark will be weakened." As a proposed resolution, Jack Daniels requested, "Because you are a Louisville neighbor and a fan of the brand, we simply request that you change the cover design when the book is reprinted."

Host:  So again, they asserted their rights as the owner of that mark but at the same time, they chose to not throw down the financial hammer on the offending party.

Sally:  Right. They gave a reasonable transition period and this one was very well-received.

Host:  So, what is the grand lesson that we're talking about here?

Sally:  Do your homework. Assuming the trademark infringement was not intentional, in many cases, the outcomes could've been completely avoided with more effective trademark research. Also, you should work with an experienced trademark attorney to help you to assess the risks, as well as to police and monitor your IP.

Host:  And at times, sometimes you catch more flies with honey than you do with flypaper, right?

Sally:  Right.

Host:  Exactly. We'll bring it all together coming your way next, right here on JDSA's Law Talk, as we're talking about creative approaches to cease and desist communications.

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Host:  Welcome back to JDSA's Law Talk. Remember, you can always connect with us on Facebook and follow us on Twitter. Just search @jdsalaw. I'm Clint Strand, talking with Sally White about trademark infringement, creative approaches to cease and desist communications. Sally, let's bring it all together. A lot of information in these last couple of conversations. What do you want folks to know about trademark infringement?

Sally:  Well, trademark infringement is serious. It's serious when another individuals or entities are out there pirating your mark, and although you may be in the right, sometimes just a simple action and taking the time to propose a solution will be far more beneficial than a hard-hitting letter, at least right out of the gate. Finally, keep in mind that an experienced trademark attorney will help you to understand the situation, your options, and your best approach.

Host:  Certainly. So, Sally, always good to talk to you.

Sally:  Thank you.

Host:  And thanks for joining us for this episode of JDSA's Law Talk. Remember, if you have a legal matter and require solid legal advice, connect with a member of the JDSA law team at jdsalaw.com. You can also hear Law Talk episodes on other topics and submit your questions or suggestions for a future show. I'm your host Clint Strand, thanks again for joining us on JDSA's Law Talk.

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