Cease-and-desist letters too aggressive Jack Daniel's lawyer says

US

Catherine White-Assistant Editor

Brands need to better communicate cease-and-desist letters to avoid being labelled a trademark bully, said David Gooder of popular whiskey label Jack Daniel's.

Gooder, chief trademark counsel for Jack Daniel's, which is owned by spirits and wine business Brown-Forman, said in an interview with IPM that in order to gain cooperation with an alleged infringer, counsel should always structure cease-and-desist letters in a way that represents the brand in an honest manner.

"When constructing a letter, you should always consider the situation before you highlight what your approach will be - are you speaking in the same voice as the brand; are you thinking about where the letter could end up; and are you being brand honest?

"These points are important to consider because if you come across as a ‘trademark bully' then there is a disconnection with your fans and this is unhealthy for the brand," Gooder said.

Jack Daniel's received praise recently after sending what has been dubbed the most "polite" cease-and-desist letter in the world, after it asked Broken Piano for President author Patrick Wensink to change the book's front cover as it appeared to be very similar to the Jack Daniel's label.

Gooder added that "every smart brand owner" is concerned about becoming a bully and said that even the wording in the letter can come across as too aggressive, so rightsholders should consider the tone they take.

"I think the words ‘cease and desist' probably don't need to be in the letter because as soon as recipients read these words they assume it is a summons for court action and comes across as too formal. Instead, counsel should communicate more clearly, be less formal and should tell them plainly what you want them to do or not do and how you would like it to happen," he said.

He added that Jack Daniel's is "part of people's lives and we do not want Jack to be perceived as a bully".

To read the full interview with David Gooder and the importance of a good cease-and-desist letter, see Intellectual Property Magazine's September 2012 issue.