Partner Chris Schwegmann's "Laughable Moments: When Trademark Holders Are Overprotective" Published in IPWatchdog
We all know it is important for trademark holders to police their trademarks, and that is particularly true for the use of trademarks on the internet. Lawyers typically do this by sending cease and desist letters to alleged infringers. These letters are often dry and humorless and follow a standard form chock-full of legalese.
Attorneys and non-attorneys love to make fun of these overly aggressive and unreasonable cease and desist letters. Online, a well-written and funny response can go viral, bringing much unwanted attention to the trademark holder and undermining the purpose of endeavor. In trademark enforcement, holders need to ask whether sending a standard demand letter will make things worse or bring negative attention to an organization. It is usually best to consider your target and their audience.
The parody website ThinkGeek launched a fake product on April Fool’s Day in 2010 called Canned Unicorn Meat. The tag line read: Pate is passe. Unicorn, the new white meat. The National Pork Board, the trade group for pork farms, owns the trademark for “the other white meat” and completely missed the joke. They penned a 12-page cease and desist letter to ThinkGeek.
In response, ThinkGeek offered a discount on the unicorn meat with the coupon code “PORKBOARD,” and apologized to the National Pork Board: “We’d like to publicly apologize to the N.P.B. for the confusion over unicorn and pork – and for their awkward extended pause on the phone after we had explained our unicorn meat doesn’t actually exist.”
ThinkGeek further stated: “It was never our intention to cause a national crisis and misguide American citizens regarding the differences between the pig and the unicorn… In fact, ThinkGeek’s canned unicorn meat is sparkly, a bit red, and not approved by any government entity.”
Of course, all of this went viral online.
In another laughable trademark enforcement moment, St. Louis brewer Jeff Britton used the term “Frappuccino” to describe a stout served at his Exit 6 Brewery. Starbucks, which has a trademark on its Frappuccino drink, sent a cease and desist letter stating the use of “Frappuccino” might cause consumers to “mistakenly believe that Exit 6 or this beer product is affiliated with or licensed by Starbucks Coffee Co., when they are not.”
Britton agreed to cease using the term, even refusing to use the word “Frappuccino” in his response letter. He used a different “F-Word” when responding to Starbucks’ letter. He wrote:
“We never thought that our beer drinking customers would have thought that the alcoholic beverage coming out of the tap would have actually been coffee from one of the many, many, many stores located a few blocks away. I guess that with there being a Starbucks on every corner of every block in every city that some people may think they could get a Starbucks at a local bar. So that was our mistake.”
He also enclosed a check for $6, which he said represented the amount of profit he made from the sale of the beer, acknowledging, “we just want to help a business like Starbucks. Us, small business owners, need to stick together.”
Britton thereafter renamed his product “The F Word,” and his response to the demand letter received lots of free media coverage, drawing more attention to the product.
Jack Daniel’s is one organization that protected its trademark and approached its cease and desist letter in the right way – with some humor. In 2012, Louisville-based author Patrick Wensink published a book titled Broken Piano for President. The book cover closely resembled the label on Jack Daniel’s whiskey bottles.
Rather than send the standard cease and desist letter, the whiskey giant chose a different and more polite tone – perhaps, aware that its letter might go viral. In the letter, counsel for Jack Daniel’s wrote: “We are certainly flattered by your affection for the brand, [and] while we can appreciate the pop culture appeal of Jack Daniel’s, we also have to be diligent to ensure that the Jack Daniel’s trademarks are used correctly.” The letter goes on to request that the author change the cover design of his book “as both a Louisville ‘neighbor’ and fan of the brand.”
In that case, the parties worked it out, the author changed the cover, and both sides got favorable media coverage out of the deal.
Perhaps these anecdotes can serve as humorous and cautionary tales revealing why trademark holders need to pick and choose their targets carefully. Don’t allow clients to be so overprotective of their trademarks that their cease and desist letters backfire and become big national embarrassments.