IP ENSight | 6 December 2017

Stop using our trade mark … please … pretty please

by Gaelyn Scott
If you have ever received a trade mark letter of demand, the chances are that you thought one or more of the following things: long, scary, legalistic, absurd, incomprehensible. It is far less likely that you thought any of these things: perfectly reasonable request, clearly explained, a tricky issue handled with charm and tact – but things may be changing. 

Recently, the trade mark counsel of US company TGI Fridays sent a letter of demand to a bar in Chicago called Moneygun. The issue was that the owner of the bar was planning to decorate his business as TGI Fridays. The wording of the letter of demand included:

“Dear Bruce, as the trademark counsel at TGI Fridays, I wanted to reach out regarding Moneygun’s plan to dress up as TGI Fridays for Halloween. It’s certainly a rite of passage to dress up as your personal hero for Halloween. Fortunately, we have a number of things you can take off our hands to party like it’s always Friday. Please see enclosed gift. 

Unfortunately (for you — not us), trademark law requires us to protect our brands and to take action against any use that might cause confusion or diminish the value of our trademarks. I’m concerned that your event — featuring ‘TGI’ branding, our logo, a variation of our IN HERE, IT’S ALWAYS FRIDAY slogan, and so on — would cross that line. As such, we must ask that you avoid using TGI Fridays’ trademarks, logos, and other property in your event. Seriously. Don’t. Thanks. Happy Halloween.”

We saw something very similar a few months back when Netflix had an issue with a pop-up bar that was seemingly going to infringe the rights of the Stranger Things TV series. The wording of that letter of demand included: 

 “Danny and Doug, I heard you launched a Stranger Things pop-up bar. I don’t want you to think I’m a total wastoid, and I love how much you guys love the show but I don’t think we did a deal with you for this pop-up. You’re obviously creative types, so I’m sure you can appreciate that it’s important to us to have a say in how our fans encounter the worlds we build. We’re not going to go full Dr. Brenner on you but we ask that you please not extend the pop-up beyond its six-week run. Reach out to us for permission if you plan to do something like this again. Let me know as soon as possible that you agree to these requests. Please don’t make us call your mom.”

Even that was not entirely original. The Jack Daniels company seemingly started the nice letter of demand trend a few years back when it had an issue with an author who used Jack Daniels imagery on his book covers. The very polite letter that it sent included: 

“We are certainly flattered by your affection for the brand but we also have to be diligent to ensure that Jack Daniels’ trademarks are used correctly. As an author you can certainly understand our position, you may even have run into similar problems with your own intellectual property.”

What is going on here? It is fair to say that trade mark owners are slowly but surely starting to understand that letters of demand can lead to bad publicity. 

The kind of bad publicity that UK craft beer giant BrewDog, a company that prides itself on its anti-establishment image, received when it sent a very establishment trade mark letter of demand to a much smaller craft brewer. The kind of bad publicity that golfing giant Titleist received when it sued a company that copied the Titleist font and replaced the name Titleist with the word Titties. The kind of bad publicity that North Face (tagline: Never Stop Exploring) received when it went after a teenager who came up with a product called South Butt (tagline: Never Stop Relaxing), and who had this to say to the press: “The consuming public is well aware of the difference between a face and a butt.” The kind of bad publicity that US chicken chain Chick-fil-A (tagline: Eat Mor Chickin) received when it tried to stop a farmer from selling T-shirts bearing the term Eat More Kale, prompting The Economist to say this: “Its idea of self-defence looks to others like bullying … one entity sells food, the other clothing, only the profoundly stoned or deranged would try to eat a T-shirt or wear a chicken sandwich.”

Where to from here? I am certainly not suggesting that trade mark owners shouldn’t enforce their rights – trade marks play a very important role in avoiding consumer confusion and, despite the invariable protestations of innocence, much of the alleged infringement is intentional. Trade mark owners should, however, probably work on the assumption that their demands will not only do the rounds on social media, but quite possibly end up in the media too. 

Any demand should therefore be sustainable. It should be clearly set out and free of legalese. A light touch is fine, but there is no need to go to the contrived and somewhat desperate lengths that Netflix and TGI Fridays have gone to. First names are probably OK, but there is certainly no need to bear gifts or mention the recipient’s mom – and there is certainly no need to “reach out” or apologise for acting like a “wastoid”!

 

Gaelyn Scott

trade mark attorney | director | head of IP department
gscott@ENSafrica.com
cell: +27 83 632 1445

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