Cease-and-desist letters remain an effective tool for stopping trademark infringement without the expense of litigation. However, “bullying” smaller competitors with far-fetched infringement allegations may land yourself and/or your company in a social media nightmare. Individuals and organizations on the receiving end of cease-and-desist letters are increasingly utilizing internet sensations like Facebook,™ Twitter,™ and YouTube™ to launch “shaming” campaigns against their accusers.
In September 2009, Hansen Beverage Company, the makers of MONSTER ENERGY® energy drinks sent a letter to a small brewery in Vermont demanding that it stop using the mark VERMONSTER as a trademark for beer. (See the article Cease & Desist Letter from an 800 Pound “Monster” Results in Action by Congress, Trademark Topics™, February 2010.) The Vermont brewery fought back on the internet and garnered public support for its cause. (Click on the image below for an example of an internet article written in support of the Vermont brewery.) The public backlash against Hansen caused the company to back down and enter into a settlement agreement that allowed the Vermont brewery to continue to use its VERMONSTER mark.
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Shaming also encouraged McDonald’s to quickly resolve a trademark dispute with a Chicago-area teenager. McDonald’s opposed 19-year old, Lauren McClusky’s use of “McFest” for her charity benefit concerts. After several internet postings bashed McDonald’s for its attempt to prevent the teenager from using a derivation of her last name, McDonald’s agreed to pay McClusky to change the name of the concert. (Click the image below to read an example of the “shaming” of McDonald’s.)
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The company accused of infringing may not even be involved with the “shaming” campaign. For example, in May 2010, General Mills, owner of the DOUGHBOY® trademark, sent a cease-and-desist letter to a small cookie company in Salt Lake City called “My Dough Girl.” After learning of the letter, customers of the local business started a Facebook™ page entitled “My Dough Girl v. Pillsbury Corporation.” Despite the efforts and support of its loyal patrons, the cookie company ultimately decided to change its name. (Click the image below to read an article regarding the dispute.)
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Although “shaming” may not defeat infringement allegations, it is likely to cause at least some harm to the trademark owner’s reputation. Even if the trademark holder’s allegations are valid, the public often sides with the small, local business that is perceived as the victim of a large corporate bully. Consequently, the trademark holder is often forced to police social media and respond to statements made therein.
To combat “shaming” techniques, trademark owners should thoroughly research potential infringement claims prior to sending a cease-and-desist letter. This information can be used to draft a more personalized, detailed cease-and-desist letter rather than the standard legal boilerplate. An accused infringer faced with a supported and well-reasoned infringement allegation may be less likely to seek sympathy from the public. This upfront research will also help the trademark owner defend its infringement allegations if confronted with a public attack.