By David Bell, Lawyer and Chair of Social Media Practice at Haynes and Boone, LLP
Perhaps you’ve heard about Chick-fil-A’s recent “oops” moment. The company fired off a cease and desist letter to a Vermont artist over his use of and trademark application for EAT MORE KALE. The chicken eatery sent the letter in an effort to protect its EAT MOR CHIKIN tagline, but the letter sparked an outcry throughout Facebook and the blogosphere. It also led to an anti Chick-fil-A petition that has already garnered tens of thousands of signatures and a CNN feature story mocking the company.
Marketing professionals know that protecting a brand can be vital to its continued success. Cease and desist letters aim to persuade someone to stop brand misuse, without having to resort to a lawsuit. In the past, letters might fall on the desks of just the recipients or their lawyers. Social media now spreads many of these letters like wildfire. One overly aggressive notice could land a full-page blog post, thousands of re-tweets, and negative publicity. In some cases, this is unavoidable, and a strongly-worded letter is simply needed. In others, the public relations risk should be more heavily weighed.
Tips and questions to ask before sending a letter:
- Research the individual or company to whom you plan to send a cease and desist notice. Who posted the content—a current or former employee or vendor, a company critic or competitor, or a well-intentioned consumer or fan?
- Consider how a proposed notice will be received. Think about how it would play out in the press or before a judge. The additional time researching and writing an appropriate letter is well spent. It can help to avoid a PR fiasco or positive to the receiving party, as in the Vermont kale enthusiast’s case. In some cases, you can also lower the risk that the recipient will file a preemptive lawsuit, asking a judge to rule that there is no infringement occurring.
- Consider whether sending a letter is even appropriate. If no action is taken, the brand misuse might not create much true harm. For instance, if it appears in a single blog post, it might be deeply buried on the website after another day or two. And if on an unpopular website of social media account, few eyes may see it anyway—again, assuming you don’t fuel the fire by unnecessarily upsetting that person.
- Use a tone appropriate to the situation. It should parallel the company’s level of concern, speak appropriately to the person who will receive the notice, and reflect the company’s values. Polite requests can be more effective than aggressive letters. Of course, the result that your company is seeking, and how quickly, is important. If the situation involves truly abhorrent behavior by an infringer, then a letter should more likely be sent by outside counsel. Among other advantages, this allows the company to distance itself somewhat from any harsh tone necessarily included in the letter.
- A cease and desist notice is almost never confidential or privileged. It is very possible that a notice will end up on the recipient’s blog or website, or in the news, and the sending company will likely have no legal recourse.
- Spin your wins. Use your company’s blog, social media outlets, and website to educate the public that you are shutting down frauds because you want to protect customers against malicious activity and work to keep costs down. When communicated with care, this can leave a favorable public impression, not to mention advise customers to beware of unauthorized products, vendors, social media pages, apps, and other Internet and mobile content.
In short, to avoid the “fowl” attention that Chick-fil-A landed, before sending out cease and desist letters, brand owners should weigh PR risks against business and legal considerations, think carefully about whether a letter should be sent, and match the tone and language of a letter to the circumstances at hand.
The opinions expressed here are those of the author only and do not necessarily reflect the opinions of the law firm with which the author is associated, or its other lawyers or clients.
