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How Aggressively Should You Defend Your Trademarks?

By Christopher Coble, Esq. | Last updated on

Jack Daniel's has long been one of the most aggressive companies when it comes to defending its brand. Most recently, it successfully defended a state law that legally defined "Tennessee whiskey" -- a phrase featured prominently on Jack Daniel's bottles -- as charcoal-filtered, corn-based whiskey aged in new barrels -- a process almost unique to the Jack Daniel's distillery.

And while proactively defending the distinguishing trademarks and characteristics of your business is admirable (and sometimes necessary), some companies have been known to go overboard, and garner some negative attention. So how do you find the right balance when protecting your business image?

A Little Levity Goes a Long Way

Back in 2012, around the same time Jack Daniel's was lobbying Tennessee's state legislature to legally protect their Lincoln County Process of distilling, Patrick Wensink was releasing his novel, "Broken Piano for President." The book featured a distinctive cover, in that the cover bore a distinct resemblance to the label on a Jack Daniel's bottle.

Instead of sending an overbearing cease and desist letter threatening legal action and financial ruin, an attorney for Jack Daniel's chose the lighter path, acknowledging the author's fandom and even offering to help pay for printing new covers:

"In order to resolve this matter, because you are both a Louisville "neighbor" and a fan of the brand, we simply request that you change the over design when the book is re-printed. If you would be willing to change the design sooner than that (including on the digital version), we would be willing to contribute a reasonable amount towards the costs of doing so. By taking this step, you will help us to ensure that the Jack Daniel's brand will mean as much to future generations as it does today."

By taking this tack, Jack Daniel's gained widespread public acclaim and still protected their trademark.

A Little Over the Top

By contrast, one craft brewer in Petaluma, California, Lagunitas, slapped another craft brewer in Chico, California, Sierra Nevada, with a lawsuit for supposedly mimicking their iconic "IPA" beer label. After some very loud "aren't we all in this together" backlash on social media from fans of both breweries, Lagunitas withdrew their complaint. Repairing their reputation with customers and their relationship with other breweries may take a bit longer, however.

Companies are encouraged to avoid the so-called Streisand effect, which refers to backfired attempts to suppress or censor information that only lead to further publicity on the issue. After Barbara Streisand's 2003 efforts to curb photos of her Malibu home only drew more attention to her property, the effect has been noted elsewhere, most notably regarding online information and most recently following the released documents from the Sony hack. So consider the possible backlash when crafting your cease and desist letter.

You worked hard and probably spent a considerable amount of money on creating and nurturing your company's image, reputation, and trademarks. So it's only natural you want to protect it from copycats and thieves. But remember, that image can be tarnished just as much by being over-aggressive in your trademark protection as it would've been by the trademark infringement.

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