It’s your turn to get the coffee.

Guest contributor Annette Freeman writes:

When it comes to enforcing your hard-won trade mark rights, there’s the right way to do it and the wrong way to do it. As the old cliché says, it is wise to choose your battles; and it is also wise to carefully consider your weapons. To mix a few more metaphors, too often trade mark owners use a sledgehammer to crack a nut.

Here’s an example: Louis Vuitton recently incurred quite a bit of derision for sending a cease-and-desist demand to the Dean of the University of Pennsylvania Law School, objecting to an imitation of its signature “monogram print” on a poster advertising – of all things – a symposium on fashion and IP law. The Associate Dean was initially taken aback and agreed to remove the posters. But Penn reconsidered after mulling over the matter with its legal advisors, and responded saying that the mock-up of the design was a parody, was unlikely to cause confusion, and did not dilute LV’s rights in its design. LV’s letter can be read here, and Penn’s reply here.

It’s possible that Louis Vuitton’s letter, which was perhaps understandable and wasn’t too aggressive, might have attracted less derision in the Twittersphere if LV hadn’t already attracted somewhat of a reputation for lacking a sense of humour when it comes to its IP rights. It had earlier managed to successfully sue Hyundai for using its monogram print on a basketball in a TV advertisement, where the ball appeared on screen for about one second. The US District Court held that this was a case of “dilution” – an action peculiar to the US which is supposed to protect trade marks from tarnishment or disparagement, or dilution of their distinctiveness, even where there is no likelihood of confusion.

But to a happier case study: Jack Daniel’s, of Tennessee whiskey fame, received many bouquets from commentators when it wrote what they called “the nicest cease and desist letter ever”. An author had put out a book using on the cover a close mock-up of the well-known black & white Jack Daniel’s label (check out the label, cover and “nice” letter here. Not only did JD ask very politely for the cover to be changed at the next reprint, noting that the author was a “neighbour” in Tennessee and a Jack Daniel’s fan, it even offered to help with the costs. The social media commentariat, usually hard to impress, decided that JD was to be congratulated. The story made the mainstream media and was hailed as an “advertising coup”. The author agreed to change the cover at the next reprint, and declined the offer of expenses.

It is a fine line for trade mark owners and their advisors – at one end of the spectrum there are clear counterfeiters or rip-off artists who are seeking to ride off the fame of a brand. At the other end, there are mis-guided fans who think they are “helping” the brand, or that what they are doing is fine. When you add into the mix the difficult question of whether the use constitutes parody, or whether the brand is diluted or tarnished by the use complained off, the lines become even harder to draw.

Bearing all this in mind, consider another recent stand-off in the USA: Starbucks (and you don’t need me to tell you they sell coffee) versus a small town dog day care business, which has chosen the name…Starbarks. Personally, I laughed. Does that make it parody and OK? This item in the local newspaper shows the sign that the business chose to adopt – not too far removed from a certain circular green logo familiar to java joes. Starbucks is hoping for an amicable back-down by the doggie salon, but if it were to dig its heels in, they might have trouble with this one. Dog day care and coffee purveying are not closely related services, and the joke in the name lends itself to an argument that it is parodic and unlikely to be confused with the coffee giant. As to dilution, it seems from the news reports that many witty dog salon owners across America have adopted the name ‘Starbarks’, so that cat (or dog) may already be out of the bag.

There is a serious lesson here for trade mark owners. The world is full of plenty of serious threats to IP rights, and you would be best advised to focus on those that are truly damaging to your business and your brand. It may sometimes be quite appropriate to go in swinging when your rights are clearly being trampled upon. However, if you do need to raise a point of order when a more mild infraction is found, take the gentle approach.

Annette Freeman  19 October 2012