Comment It seems that every few months, this story plays out: A trademark owner sends a cease-and-desist letter to someone it legitimately believes is infringing its trademark rights. The infringer in these stories – often a small business owner or charitable group – takes one look at the pages of legalese and heads straight to the local TV station or Facebook to fight a battle in the court of public opinion. A furor is raised in which the trademark owner is painted as a bully. Petitions are signed and the trademark owner is chastised in the media. While the controversy inevitably dies down, the concern is that the trademark owner may have done its brand more harm than good. Invariably, these media accounts omit any explanation that U.S. trademark law requires owners to police their marks or risk losing them to genericide, or that the legal requirement of a “likelihood of confusion” is more complicated than simply comparing Product X and Product Y. Regular people – that is, non-trademark lawyers – are unlikely to be familiar with the ins and outs of trademark law, but the aggregate opinions of those same people are what gives a brand its strength. In a time where anything can go viral, trademark owners are beginning enforce their trademark rights with an eye toward their customers and the public at large.

[image via Esquire]

Jack Daniels’s offers an example of media savvy brand protection in the viral age. “The Nicest Cease-and-Desist Ever” rocketed around the web recently after the alleged infringer (an author) posted it on his personal blog. In a one page letter, Jack Daniel’s trademark lawyer Christy Susman explains in a neighborly way that the cover of Patrick Wensink’s book, Broken Piano for President, infringes the distinctive JD marks. She explains that while Jack Daniel’s is flattered, allowing uses like this risks weakening their brand. Susman requests that the author change the cover with the next printing, but offers to help with the costs if he would change the cover sooner than that. And that’s it. No legalese. No threatening language for internet commentators or TV anchors to latch onto. The simple sentiment of “This is our brand, we are required to protect it, so let’s work it out” was all it took for this letter to be anointed the “nicest ever.” Jack Daniel’s got some free publicity and looked good in the public eye. Of course, every infringement presents its own set of facts and trademark owners cannot always be as restrained as JD was here. A firmer hand or a stronger stance may be required from the outset or might eventually become necessary. But as an opening shot to a “friendly infringer”, a brand owner could do worse than following Jack Daniel’s lead. Sources:

This article was prepared by Andy Liddell ( / 512 536 3043) from Fulbright’s Intellectual Property Practice.