What to Do When You are Infringed

Do you want to be Starbucks or Jack Daniel’s?

While it is never too soon to protect your company’s valuable trademark, registration alone is not enough. The owner of a trademark has to stop people from infringing its marks, known as policing the mark.

It is a difficult line to walk. If you don’t police, you could be deemed to have abandoned your mark or have allowed infringing uses to go unchecked. Too much (or inappropriate) policing can make your company look like a bully and generate bad PR.

Tone matters.

Starbucks sent a standard cease and desist letter when its webcrawler found a craft brewery in Cottleville, Missouri (population 3,672) marketing Frappicino stout beer. These letters are stiff and stern—they try to scare potential infringers into quickly changing their product names.

The brewer, however, mockingly responded with a $6 check representing its profits from selling 3 pints, and a witty reply about the bar’s use of “the F word” (i.e., Frappicino) that went viral. Starbucks was roundly ridiculed for being a trademark bully.

Jack Daniel's took a different approach when it found a book cover to be extremely close to its registered whiskey label.

Jack Daniel’s received positive viral attention for its humane and humorous approach to trademark infringement. The company, via its attorney, said it was flattered by the author’s affection for the brand, but had to make sure the brand was used correctly. It offered to pay for new cover artwork in the next edition of the book.

In both cases, the trademark was policed, but one company was called a bully and the other became a folk hero.

The first step in policing is to find other people who are using your mark or something substantially similar that is likely to cause confusion in the marketplace. This can be done through search engine alert services or by hiring “watch” companies. Then you need to send a cease and desist letter, demanding that the infringing use stop. After that, there are a number of ways to maintain control of the mark from licensing the use to seizing and destroying infringing material.