How To Resolve A Trademark Issue Politely & Without Legal Threats

Timothy Geigner — Mon, 18 Feb 2013 07:47:21 PST

Another trademark dispute, another horrible and negative story where the mark owner acts like a jackass, right? I mean, the trend is clear, from 60's rock legends suing over penis-apps, to game producers suing over terms nearly a century old, you get the idea that everyone with a trademark is Oscar the Grouch. They just can't help but call in their big shot lawyers, who immediately send out the cease and desist notices, even though they'd rather mail out one of those Harry Potter howler letters or possibly a small nuclear weapon. It's inevitable.

Or, then again, perhaps it isn't. Nick writes in with the tale of an absolutely brilliant response to a trademark dispute from the mark holder, who not only left the lawyers at home and replaced them with a polite letter, but was so over the top kind about the whole thing as to suggest other words for the violator's product, turning him into a potential customer.

Early in December here at Wordnik we got a nice email from one of our loyal users, letting us know that there was a word game in the app store using the name “Wordnik.” It didn’t have our heart logo (or even our “gearheart” ) so our correspondent wasn’t sure it was ours … and it wasn’t. So we took a look at the game, and it was called Wordnik. And there was contact info for the developer.

This is typically where we'd see a hateful C&D notice sent, filled with accusations of theft, reports of untold gazillions in very real harm done by the violation, and the promise that if the violation doesn't cease the lawyers will swing by soon to eat the faces off of their children.

Pictured: Trademark lawyer
Image source: CC BY-SA 2.0

For some strange reason, however, the Wordnik folks decided that there just might be a better way to go than all out war. While acknowledging that their initial reaction was to be somewhat upset over the use of their mark, they instead chose to send the following email (edited only for formatting):

One of the users of our website, Wordnik.com, pointed out to us that your iOS app is also using the name “Wordnik”. You may not be aware that we have applied for a US trademark for the name “Wordnik” and our application has been approved for registration. Since the Wordnik API powers many word games on the web and on mobile devices, our trademark filing for the name “Wordnik” also includes its use in combination with computer games.

I’d rather not drag our lawyers into this (expensive for both of us) — but given our trademark status, you probably want to consider renaming your app (and maybe even using our API, check it out at developer.wordnik.com). How about:

Wordify
Wordista
Wordian
Wordeur

This list of English suffixes may help, too: http://en.wiktionary.org/wiki/Category:English_suffixes

I hope to hear back from you by Dec 31, 2012.

The response was everything they had hoped for. Not only did the other developer respond promptly, promising to change the name of his app and acknowledging that he hadn't realized his error, but the two sides continued to communicate about several topics, including background on the suggestions the Wordnik folks had made and Wordnik's own API and how it could be used to enhance the previously offending app. Not only was this a kind way to handle a trademark request, but it turned out to be an advertisement for the Wordnik product itself. Then, because apparently Wordnik is trying to win some kind of peace award here, they sent the guy a Wordnik T-shirt. The offending app has since changed its name to Wordogram and all is well.

Wordnik notes that this approach may not work universally, but why shouldn't it be the first attempt in most instances? They say it best themselves:

From our point of view, this was the best possible outcome. We defended our trademark; we met a cool, kindred-spirit developer and had a fun conversation; and we found a new word game to play (and possibly gained another API client). And it’s likely none of this would have happened if we’d sent a pissy email, guns blazing.

Let's hear it for kindness and sanity.

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Jack Daniel's Shows The World: Here's How To Send A Polite Cease-And-Desist

Mike Masnick — Tue, 24 Jul 2012 07:05:10 PDT

For years we've written about how lawyers send absolutely ridiculous (and usually ridiculously aggressive) cease-and-desist letters. This comes from a time when there were likely only two parties who were going to be a part of the discussion. The company or individual on behalf of whom the letter was being sent... and the recipient. In such a world, lawyers were taught to be aggressive and to make the strongest possible case for their client, often claiming things and threatening actions way beyond what is reasonable. The thinking tended to be that the recipient would either shut up and back down completely (they hoped), or if they lawyered up, there would be some sort of negotiation, and an end result where a middle ground was met.

The internet changed things. It added a "third party" to these discussions: the public. As a result of that, over the last decade, recipients of such overly aggressive threat letters have gone public with those letters, leading to both ridicule towards the sender, but also much more attention being given to that which was sought to be "ceased" and "desisted." Hence, the rise of The Streisand Effect.

Every time we discuss one of these situations, people often ask us something along the lines of "yeah, but what else is the individual/company supposed to do?" Especially when it comes to trademarks, people often toss out the (somewhat misleading and inaccurate) claim that the trademark holder has to fight back or they might lose their trademark. Beyond that being an exaggeration (they only need to try to deal with situations where there might be confusion, or where the mark is being made to seem generic), it also ignores that there are more reasonable ways to handle such situations. One, for example, is to offer up a free (or super cheap) license. Another is to actually be nice. But that happens so rarely that it makes news when it happens.

A whole bunch of you have been sending in this particular example, of Jack Daniels sending one of the friendliest cease-and-desist letters that you'll ever see. It was sent to Patrick Wensink, the author of a novel called Broken Piano for President, whose cover certainly makes use of the iconography around Jack Daniels famous whiskey. But, rather than get all threatening, the letter is quite nice, reasonable and even (somewhat surprisingly) accommodating. It starts out by admitting that they're flattered, not upset.

We are certainly flattered by your affection for the brand, but while we can appreciate the pop culture appeal of Jack Daniel's, we also have to be diligent to ensure that the Jack Daniel's trademarks are used correctly. Given the brand's popularity, it will probably come as no surprise that we come across designs like this one on a regular basis. What may not be so apparent, however, is that if we allow uses like this own, we run the very real risk that our trademark will be weakened. As a fan of the brand, I'm sure that is not something you intended or would want to see happen.

Furthermore, rather than being excessively demanding, such as by demanding destruction of the old books, the company just asks for any future printings to have a different design -- and does so noting that it's suggesting this in a neighborly manner, and is even willing to help pay for the costs of such a change if they do it for existing books (and e-books):

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 cover 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 cost 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.

Now, I still think that the company is exaggerating a bit in suggesting that this would really diminish the trademark, and also you could see how the company could issue a license instead, this really is a much much better response than a normal legal threat letter. Nicely done, Jack Daniel's! Hopefully, other lawyers and companies start paying attention.

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How To Resolve A Trademark Issue Politely & Without Legal Threats

Jack Daniel's Shows The World: Here's How To Send A Polite Cease-And-Desist