by Debby Winters-
As the economy recovers and competition heats up, trademark disputes are on the rise. According to U.S. district court records, trademark lawsuits rose 5% in 2011 to an all time high of to 3,692. These costly scuffles can be difficult for start-ups with limited resources. But a growing number of small business owners have begun fighting back using a tactic lawyers describe as “shaming,” or exposing what they view as baseless trademark infringement threats on the Web or through social-networking websites such as Facebook and Twitter.
The strategy has been useful in providing entrepreneurs with negotiating leverage. Wendy Seltzer, a Yale Law School Fellow founded the website Chillingeffects.org for just such a purpose. The site will collect cease-and-desist letters in trademark disputes so the notices are posted online. But not everyone is convinced that social media can really help to deter big corporations from coming after the smaller entrepreneurs. Some feel that it won’t really deter the big corporations because after all, intellectual property laws require them to be aggressive—even against minor infractions—or risk weakening the scope of their protections. Trademark law, as well as patent law requires the holder of the trademark or patent to go after others who are using it illegally.
Also, many trademark infringement claims raise legitimate concerns and shaming tactics can backfire by highlighting infringing conduct. However, social media gives defendants a new way to try to embarrass trademark owners who may be overreaching.
A recent example of this use of social media brings us to the story of a T-shirt maker in Vermont who received a cease-and-desist letter from Chick-fil-A Inc. when he began to use the slogan “Eat More Kale.” Of course we all know that the famous trademark slogan “Eat Mor Chikin” belongs to Chick-fil-A. When The T-shirt owner received the letter, he not only created a Facebook page and an online petition, which has several thousand supporters—including the governor of Vermont, but by adding a “donate” link, he has already raised more than $10,000 in his defense against giant Chick-fil-A. https://www.facebook.com/pages/Support-Eat-More-Kale/140912602685987
Sometimes customers use social media to shame bigger companies on behalf of a local business they patronize. In 2010, General Mills, Inc., holder of the Pillsbury Dough Boy trademark, sent a cease-and-desist letter to a Salt Lake City, Utah, baker then using the name My Dough Girl. One of her customers was so upset; he created a protest page on Facebook that attracted more than 2,000 fans in eight weeks. https://www.facebook.com/my.dough.girl.vs.pillsburycorporation
If these events had happened 10 years ago these stories would have been very different. And many of the folks who turn to social media in cases like this say that they rarely used Facebook or Twitter before the dispute arose.
And while some small companies use this approach of using social media to shame these large companies into backing off, not all do. Recently in my hometown of Fayetteville, Arkansas, several businesses received letters from big companies. A woman who prepares organic, vegan food for customers who pick it up once a week and calls her business Lean Green Cuisine, received a letter from Nestle, the company that owns Lean Cuisine frozen foods, asking if she would be willing to change the name of her business. At first she was not willing to do so but eventually she gave in because she did not want to expense of fighting a big company like Nestle. Dairy Queen recently filed suit in federal court against the Northwest Arkansas business J.J.’s Grill over the use of the term “grill-N-chill.” Dairy Queen holds the trademark for the term “grill and chill.” Neither of these companies set up Facebook pages or posted on Chillingeffects.org. This must happen every day, but what doesn’t happen every day is the use of social media to fight back. But maybe it should.
I don’t know whether there is any trademark infringement in any of these stories. The crux of any actual claim is whether the use of the name or slogan creates customer confusion and whether there is a loss of profit from this confusion. Other factors are how long the two brands have existed and if the second brand would dilute the value of the existing brand. As in all areas of law the facts speak for themselves. But maybe in these cases, social media is doing a little of the talking for them.