Laughable Moments: When Trademark Holders are Overprotective

By Chris Schwegmann
March 5, 2017

Trademark explosionWe 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.

 

The Author

Chris Schwegmann

Chris Schwegmann is a partner at Dallas-based Lynn Pinker Cox Hurst, where he focuses his practice on intellectual property. He has been recognized on the Texas “Super Lawyers” list for his work in business litigation and intellectual property. Chris was named by D Magazine among the “Best Lawyers in Dallas: Intellectual Property” for 2015 and 2016. For more information, or to contact Chris, please visit his firm profile page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 3 Comments comments.

  1. Bob Zeidman March 6, 2017 11:26 am

    Chris, I’m very surprised that an IP attorney would scoff at trademark holders protecting their trademarks. The Starbucks example is not “laughable” but was required by law. As any IP lawyer knows, the public unauthorized use of a trademark without action by the trademark holder can result in the loss of that trademark, as famously happened to many companies. See https://consumerist.com/2014/07/19/15-product-trademarks-that-have-become-victims-of-genericization for a long list.

    While the National Pork Board response seems like overkill, you don’t link to the actual letter. No one seriously sends a 12-page C&D letter, so it sounds like the letter itself was a hoax or a joke itself. It’s not even clear that this letter exists as there is no copy of this letter anywhere I can find, including on the ThinkGeek website. However, the one page C&D letter that is on ThinkGeek shows that its joke went viral and could be found on many Internet sites. As you know, allowing a trademark violation to go viral without a response from the trademark owner has a good chance of killing the trademark.

    This article is simply bad advice.

  2. Atari Man March 7, 2017 4:09 am

    Bob Zeidman: thanks for failing to see the humor in these stories, thereby proving Chris’ point.

    More often than not, overzealous trademark owners assert that they own rights that aren’t theirs. Take, for example, Chick-Fil-A, which owns “eat mor chikin”. It tried to stop a Vermont farmer from selling t-shirts that said “eat more kale”, even though Chick-Fil-A’s mark has three words, two of which didn’t appear on the farmer’s shirts. Normal people, and even some lawyers, immediately grasp that if Chick-Fil-A wanted a monopoly on the phrase “Eat More”, that’s what it should have registered, and that in it was trying to use its larger size and the threat of frivolous litigation to bully an individual into ceasing from something that he had a legal right to do.

    Even the Jack Daniels case, which was a trade dress issue rather than a TM infringement matter, seems like a stretch. JD’s lawyers took the right approach in their letter to the author by explaining their position without using heavy-handed language, but Jack Daniels doesn’t publish books, so where might any confusion arise? People don’t go to Barnes and Noble looking for Tennessee sour mash, and they don’t look for the NYT bestseller list at the liquor store.

  3. Eric Berend March 11, 2017 9:35 pm

    If I might add, this phenomenon is a creature of the Internet era. Before this, there would be much more expense for the publicity required, in mounting such a publicly visible response.

    One aspect of form letters is that, as attorneys are no doubt aware, some never seem to die. With conservative rates of adoption of newer technologies in the legal industry being traditional, it appears to me, that this situation is founded upon an a artifact of that tendency. The National Pork Board was literally operating, in this instance, as if the Internet did not yet exist.

    I am reminded of the anecdote I heard from another local practitioner regarding collection attorneys not bothering to parse the actual wording of purported claims taken up into their work. In one particular case, reading the actual contract in force, its terms required resolution of any legal disputes in an obscure judicial district in Italy.