Effective trademark defense can require diplomacy

It is easy to have a “That’s mine” attitude when it comes to intellectual property. The value inherent in a given piece of IP is often intangible and one of the few ways of making it tangible is by making sure the rights you secured from the U.S. Patent and Trademark Office are strongly protected. On the flip side, if you’re wrongly accused of IP infringement, developing appropriate legal responses is required.

The keyword in that last sentence is, “appropriate.” Legal action can take many forms. Finding the most effective one can demand finesse. You have a right to protect your IP assets and reputation, but if you take your efforts to the extreme, it can backfire, delivering a blow to a company’s brand and perhaps the bottom line.

Examples of notable fights

Jack Daniel’s, the Tennessee whiskey maker with a reputation for waging battle when its brand is under threat, serves as an example of a company that seems to know how to walk the line.

On one hand, it successfully engaged in legal legerdemain several years ago to get the Tennessee legislature to pass a law defining Tennessee whiskey as that made by the specific distilling process used by Jack Daniel’s. About that same time, a novelist put out a book featuring a cover closely resembling a Jack Daniel’s label.

The company could have issued a harsh cease and desist order. Instead, the company, recognizing that the writer is a Jack fan, offered to help pay for a new cover. The author took the deal and Jack Daniel’s earned public acclaim for legal “sweetness.” It protected its reputation and its trademark.

At the other end of the spectrum is the Streisand Effect. This hearkens back to 2003 when celebrity Barbara Streisand went to court to block an organization’s efforts to include her Malibu home in an online archive of California coastline photos. She claimed invasion of privacy.

When word of the suit spread through social media, online views of Streisand’s home took off. She saw her privacy infringed worse because of her suit than it would have been otherwise. Plus, the court dismissed the suit.

Lest the point be lost, what these stories reinforce is the value of working with attorneys who know how to strike the proper balance in the course of trademark litigation.

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