Ultimately, trademark holders must enforce their trademark rights, but they must do so in a way calculated to minimize the risk of negative publicity and avoid counterproductive enforcement actions. Initially, trademark holders should consider whether enforcement in a given case is necessary. Historically, trademark owners considered hyper-vigilant enforcement essential to preserve their rights, erred on the side of over-enforcement, and typically sought to enjoin even peripheral uses that did not strike at the core of their businesses.
Today, however, sending a cease-and-desist letter in a tenuous case is more likely to cause an accused infringer to resort to public shaming—and if done often enough, it probably will. For holders of non-famous marks, this means evaluating, with a truly discriminating eye, all factors considered in a classic infringement claim. Although holders of famous marks must be more aggressive, and cannot ignore non-competitive uses, calculated enforcement is still better than indiscriminate enforcement.
When trademark holders act, they should consider the optics of how they object to the infringing action. Sometimes, something more proactive than a cease-and-desist letter may be necessary. For instance, in 2009, McDonalds sought to prevent a teenager, Lauren McClusky, from calling her charity event "McFest." McDonalds' actions, predictably, prompted a public outcry. Only then did they move towards settlement. Given the likelihood of a negative public reaction, a proactive effort to settle the matter immediately, perhaps even with a token charitable contribution, could have suited McDonalds' interests, protected its trademark rights, and avoided the negative publicity altogether.
Further, trademark holders should consider the tone and content of their cease-and-desist letters. Historically, cease-and-desist letters used extremely strong and threatening language, designed to impress upon the infringer the serious consequences that could flow from their actions. While that may be appropriate in instances of willful infringement, harsh language directed at a sympathetic "mom and pop" infringer could backfire. An even-handed and courteous explanation of why you believe your trademark is being infringed can work just as well, if not better.
The U.S. Olympic Committee (USOC) found this out the hard way when it sent an aggressive cease-and-desist letter to Ravelry—a social network for knitting enthusiasts—that suggested Ravelry's use of the term "Ravelympics" showed a lack of respect for Olympic athletes. In response, the USOC was deluged with angry letters and emails from Ravelry's nearly two million members. Although Ravelry stopped using the term, the USOC was forced to publicly apologize—twice! Using a softer tone can thus pay huge dividends if the letter is featured in a social media campaign about, or conventional media coverage of, your enforcement efforts.
Additionally, cease-and-desist letters often demand that the accused infringer take immediate and dramatic action, such as destroying all goods, packaging, labels, and signage bearing the infringing mark, providing an accounting of profits, etc. In some cases, these demands make sense; in others, they may not. The goods involved may be of such little volume, or the resemblance to your mark so slight, or its relevance to your core business so remote, that their impact on the strength of your mark is negligible. For a small company, however, the monetary and emotional cost of destroying those materials could be substantial. The infringing "little guy" may ignore your letter and take his case straight to the court of public opinion.
If the risk to the continuing vitality of your mark is minimal, it makes little sense to risk negative publicity over an enforcement action that was barely worth pursuing in the first place. Instead of demanding immediate destruction of all infringing materials, it may make more sense to immediately offer to combine a phase-out of the infringing mark in exchange for a promise to stop using the conflicting marks thereafter. Even a lengthy phase-out can still protect your trademark rights. Not only is this more likely to result in compliance, but it is also more likely to avoid a public opinion backlash.
Finally, trademark holders should consider using cease-and-desist letters not only as a demand that the infringement stop, but also as a way to politely explain how infringement hurts the trademark holder and why they must take action. This is precisely what Jack Daniel's did when it learned that the cover art for Patrick Wensink's book, Broken Piano for President, resembled a Jack Daniel's label. Jack Daniel's cease-and-desist letter explained: "If we allow uses like this one, we run the very real risk that our trademark will be weakened. As a fan of the brand, I'm sure that is not something you intended or would want to see happen." Jack Daniel's politely requested that Wensink change the cover art when the book was reprinted, and Wensink obliged.
Such an explanation may be especially important when famous marks are involved. As in the case of Muller-Moore and Chick-fil-A, the infringer may not initially comprehend how a slogan that is unlikely to confuse customers could still negatively affect the trademark holder. If they understand this connection, they may not like what's happening, but at least they are less likely to malign your company.
Ultimately, the best tactics for avoiding negative publicity while still preserving and protecting trademark rights must be tailored to suit each client, each infringer, each product, and each circumstance. Trademark holders must police their trademarks and root out infringement, but in today's unique climate, they must be ever mindful not to destroy the very thing that trademarks are meant to preserve: a company's reputation and goodwill.
John E. Petite is an officer in the litigation practice group at Greensfelder, Hemker & Gale in St. Louis, where he represents clients in general commercial litigation, with an emphasis on intellectual property litigation (trademark, copyright, and trade secrets). Reach him at 314-516-2698 or jep@greensfelder.com. Mr. Petite would like to thank Greensfelder attorney Michael A.T. Schwalbert for his valuable contribution to this article.
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