April 12, 2012
Your startup is taking off. You put a lot of work into developing clever brand names and nifty logos that reflect your products or services. Your brands start to get name recognition, and business starts to pick up. Then one day, you get back from your coffee break to find a citation-filled e-mail from too-many-names law firm telling you that their client, GigantiCorp, wants to stomp on your marks. What do you do?
These “cease-and-desist” letters are a tool intellectual property (IP) owners use to enforce their IP rights. The idea is to explain the IP owner’s rights and strongly request that the potential violator stop using the ostensibly infringing mark. These letters are usually sent by lawyers and often threaten to sue if the violator doesn’t stop. Although these letters are a legitimate way to police trademarks, sometimes trademark owners want to control more than they actually own. Cease-and-desist letters can seem threatening, frightening, and authoritative-sounding enough to make you cave in immediately to GigantiCorp’s demands. Unless your name is David Thorne.
Here’s the story of David Thorne’s cease-and-desist letter experience. In case you haven’t heard of him, Thorne is an author and graphic designer who likes to respond to routine communications in non-routine and often irreverent ways, which he chronicles on his website. His “Missing Missy” e-mail exchange with a co-worker who asked him to design a poster to help her find her lost cat has circulated on Facebook and the blogosphere. And his office pranks on a Dwight-Schrute-like colleague definitely rival Jim Halpert’s. My favorite prank is his Photoshopping Justin Beiber’s face on all of this colleague’s stock photos. (I should reinforce proper trademark usage and say “using Adobe® Photoshop® software.”)
Thorne published a collection of these interactions in his first book, The Internet Is a Playground, which was published by Penguin®. Penguin’s logo, by the way, is to the right.
Thorne recently released his second book, I’ll Go Home Then; It’s Warm and Has Chairs: The Unpublished Emails, which he self-published and advertised on Facebook, Twitter, and his website. The original cover of his second book was a penguin on an orange background.
There was enough of a resemblance that Penguin’s outside counsel e-mailed Thorne and insisted that he stop selling books with that cover and remove the image from all online outlets. When Thorne asked why he couldn’t use the same image to promote the second book that he used to promote the first book, Penguin responded with a full-fledged, four-page, formal cease-and-desist letter. Penguin’s complaints include likelihood of confusion – which, it argues, is increased because of Thorne’s prior publishing connection with Penguin – and tarnishing Penguin’s reputation, since Thorne’s penguin is flipping the bird.
Thorne posted the entire exchange on his website. It’s an entertaining read that I highly recommend.
Yeah, I’m Not Gonna Do That… Got Any Other Ideas?
I imagine most people wouldn’t respond to a letter threatening legal action from GigantiCorp with quite as much chutzpah as Thorne since, in his words, you “could probably list ten thousand things that would be more fun than facing the grey tweedy wrath of [GigantiCorp.]’s lawyers in court.” So here are a few tips on how to respond (realistically) to a cease-and-desist letter.
1) Don’t panic. Don’t immediately hit reply. Take a deep breath. Read the letter again and make sure you understand what GigantiCorp is asking for. If you need clarification, ask for it—from your lawyer. Your first call or e-mail should be to your lawyers, not theirs.
2) Don’t assume GigantiCorp’s claims aren’t legitimate. Getting a nasty letter might rile you up, and that’s okay. Maybe you don’t see how anyone could possibly confuse your mark with GigantiCorp’s. Maybe you’re using GigantiCorp’s mark as a harmless joke. But legally, GigantiCorp might have a point. Sending an angry response refusing to comply might make you feel better in the short term, but it’s probably not the best long-term strategy.
3) Don’t assume GigantiCorp’s claims are legitimate. Just because a company is larger than yours doesn’t mean it’s always right. I think Penguin is on pretty good legal ground in this case, but some trademark owners can be too aggressive in their enforcement efforts. For instance, Louis Vuitton recently ended up with egg on its trademarks for sending a cease-and-desist letter to Penn Law over a symposium flyer design. And with trademark bullying claims on the rise, it’s always worthwhile to have a little healthy skepticism, especially if you’ve been diligent about clearing your marks before you start using them.
4) Do consider all options to resolve the situation. To run a successful business, you’ve got to assess risk. If you can comply with GigantiCorp’s demands by making a few minor modifications to your mark (perhaps a little less minor than Thorne’s), then that might be the smartest business decision for you, even if you’ve got decent legal arguments. But if GigantiCorp’s claims are a stretch and you’d have to rebrand completely to comply, it may make sense to stand your ground. Your lawyer can help you identify litigation risk and estimate cost. Also, you might be able to resolve your issues through mediation or other alternative dispute resolution options.
5) Do keep your sense of humor. As Penguin demonstrated, trademark owners can be really stuffy about protecting their marks. But you don’t have to be. In fact, you might be able to turn this into positive PR. Being stubborn and flippant is David Thorne’s shtick, so he ended up with great website content by messing with Penguin’s lawyers. Here’s an example of a more benign response:
However you resolve the entanglement, figure out how you can use this experience to adapt your trademark strategy. Maybe you can conduct broader clearance searches or be more explicit about what goods or services you’re using the marks on. Also, you might want to check in with your own enforcement efforts. Are you watching to see if someone is infringing your mark? If you run across a potential infringer, remember how you felt when you received that scary letter. Perhaps explaining your concern and simply asking the infringer to stop will be enough to fix the situation.
Unless, of course, the other guy is David Thorne.
Marynelle Wilson is an attorney with the IP & Technology firm, Cloudigy Law PLLC. She loves trademark law, pop culture, and finding innovative approaches to branding in a social media world. Marynelle was a dramaturg in her pre-law life, so she tries to work a literary or theatrical reference into every blog post. Follow Marynelle on Twitter at @marynellewilson.
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