About a week ago I had the honor and pleasure of once again presenting the annual trademark review at the 11th Annual Midwest IP Institute in Minneapolis, Minnesota, with good friend and trademark guru Paul Mussell. And happily, TTABlogger John Welch once again graciously contributed the IP Book chapter on the Top Ten TTAB Cases.
One of the points I made that seemed to resonate with those in attendance is the heightened need for “trademark civility” — in our current environment of so-called “trademark bullying,” or “trademark hooliganism,” as trademark infringement claims and demands are scrutinized on a daily basis in the media. It (the media, that is), certainly loves to devour a good David & Goliath story, and since everyone following these stories is a consumer, it’s not hard to have a strong opinion on whether an alleged case of consumer confusion is even plausible, which can lead to social media attacks on the brand owner and negative amplification of their trademark demands, a phenomenon Erik Pelton has been calling “The Streisand Effect.”
As a result, form and tone are becoming every bit as important as the actual substance of the trademark cease and desist letters. As you may recall, a while back, Derek Allen discussed the harsh language often contained in cease and desist letters, in his post titled “How to respond to demand letters.” More recently, Sharon Armstrong wrote about the U.S. Olympic Committee’s demand letter antics, later apology, and provided: A Lesson in Cease-and-Desist Manners.
One of the worst examples I’ve seen over the last year, illustrating the need for trademark civility in cease and desist correspondence, is the bombastic and sarcastic demand letter sent by Louis Vuitton to the dean of the UPenn law school, as discussed in: How Fashionable is the Louis Vuitton “Trademark Bully” Label?
I’m left wondering whether the aggressive and condescending tone of the LV demand letter played an important role in why the law school’s initial decision to pull the poster in question was so promptly and vehemently reversed, upon further consideration. No one likes to be slammed into a corner. No one likes to be insulted. Especially lawyers, legal scholars, and budding lawyers. And, honey certainly goes much farther in attracting bees than piss and vinegar. So, I’m thinking that we all improve the respective positions of our clients when the bravado is shed, and when we keep the matches away from the gasoline — we don’t need to agree on our respective positions, but we can disagree and isolate the issues separating us more productively and effectively when we elevate the discussion in a respectful manner.
A road-map for success when pursuing trademark enforcement activities might be to consider carefully proof-reading draft demand letters (after it has been determined a phone call won’t do the job) to remove emotionally-charged language, resisting the temptation to expressly impute bad faith and motives (without evidence), leaving just the bare and necessary facts to justify the professional and respectful request that the enforcement target change its direction or actions, so that any further fuss and/or litigation can be avoided.
In the end, one of the most important points to keep in mind about knowing your audience, when reaching out to trademark enforcement targets, especially in our highly-charged current digital environment, is that the entire world is your audience, not just the present object of your current frustration.
For further reading on the subject, consider these related oldies, but goodies: