When to Desist before Telling Someone Else to Cease

The web is rife with articles explaining the importance of protecting a business’s trademarks. These articles usually (and correctly) point out that, if someone is potentially infringing on your business’s trademark, it’s important to send a cease and desist letter or, if necessary, file a lawsuit, because if others start to use your mark (or something like it) and the business doesn’t protect it, eventually you can lose trademark protection.

However, sometimes it might be better not to start the legal ball rolling. I say this even though I’m a litigator and, yes, one of the ways I earn my living is by helping businesses sue for trademark infringement. Why? Well, a few recent cases highlight the importance of taking a step back and thinking things through before sending that cease and desist letter or filing a lawsuit.

Trademark Suits Should Not Be Used for Purposes Other than Addressing Trademark Infringement

One example is Trader Joe’s case against its employee union, Trader Joe’s United. The union, in its efforts to raise money for organizing locations throughout the supermarket chain, sells mugs, T-shirts, and other merchandise branded with its Trader Joe’s United logo. Trader Joe’s claimed trademark infringement and sued.

The district court granted the union’s motion to dismiss (see pages 3 and 4 of the linked order to compare Trader Joe’s marks and what the union used), writing that it felt “compelled to put legal formalisms to one side and point out the obvious. This action is undoubtedly related to an existing labor dispute, and it strains credulity to believe that the present lawsuit—which itself comes dangerously close to the line of Rule 11—would have been filed absent the ongoing organizing efforts that Trader Joe’s employees have mounted (successfully) in multiple locations across the country.” In other words, the court was saying that the real reason Trader Joe’s sued was to try and shut down the union, and, as it noted in a subsequent decision, that given the “extensive and ongoing legal battles over the Union’s organizing efforts at multiple stores, Trader Joe’s claim that it was genuinely concerned about the dilution of its brand resulting from [the Union’s] mugs and buttons cannot be taken seriously.” The court went on to hold that no reasonable consumer would think that the union’s merchandise originated with Trader Joe’s—the central inquiry in a trademark infringement case. The court also awarded the union its legal fees, noting in its decision that the case stood out “in terms of its lack of substantive merit.”

Think about What Happens If (When) a Cease and Desist Letter Becomes Public

Famed restaurateur David Chang and his company, Momofuku, also recently lost a trademark battle that they probably wish they hadn’t started. On the bright side for Chang and Momofuku, there was no lawsuit, and they weren’t unceremoniously kicked out of court like Trader Joe’s. However, they did have to issue an apology after sending cease and desist letters to several other businesses owned by Asian Americans demanding that they cease and desist using the term “chile crunch” or “chili crunch.” (For those of you who mostly stick to milder foods, Momofuku Chili Crunch is a packaged “spicy-crunchy chili oil that adds a flash of heat and texture to your favorite dishes.”) Momofuku owns the trademark rights to the first spelling and claims common law rights to the second; it applied to register a trademark for “chili crunch” with an i around the same time it sent out the cease and desist letters.

There was significant pushback on these letters from the recipients, who posted them to social media and shared them with mainstream media outlets, highlighting how Chang and Momofuku were trying to assert rights over a generic term frequently used in Asian and Asian American gastronomic offerings. The companies felt that Chang and Momofuku were trying to use their status and financial resources to unjustifiably attack other Asian-American-owned companies.

Don’t Threaten a Trademark Lawsuit If You Don’t Own the Trademark

And then, there’s the case of the Los Angeles Police Foundation (LAPF), a private group affiliated with the Los Angeles Police Department. It sent a cease and desist letter to a company selling T-shirts emblazoned with the words “Fuck the LAPD” on top of the Los Angeles Lakers logo.

In its letter, the LAPF asserted it is “one of two exclusive holders of intellectual property rights pertaining to trademarks, copyrights and other licensed indicia for (a) the Los Angeles Police Department Badge; (b) the Los Angeles Police Department Uniform; (c) the LAPD motto ‘To Protect and Serve’; and (d) the word ‘LAPD’ as an acronym/abbreviation for the Los Angeles Police Department.”

There are a lot of whiffs here for the LAPF. Strike one: Government agencies can’t get trademark protection for their names. Strike two: The LAPF isn’t the LAPD, so it has no basis for claiming infringement on something that doesn’t belong to it. Strike three (it’s a big one): Obviously, the logo on these shirts belongs to the Lakers, not the LAPF. Strike four: There’s an argument that the shirt is meant as a parody and/or political commentary and, therefore, protected under the First Amendment.

Worth noting here is the T-shirt manufacturer’s carefully crafted response to the LAPF after receiving the cease and desist letter: “LOL, no.” That was the entirety of the response. Points for clarity, concision, and all-around humor.

What does this all mean? Well, if you send a cease and desist letter or file suit to protect a trademark you don’t actually have (the LAPF), or if you’re trying to accomplish a goal that is not related to actually protecting your trademark (Trader Joe’s), you’re just going to be embarrassed. And while the Momofuku matter is more nuanced, it’s fair to say many companies use the term “chili crisp,” making Momofuku’s efforts to trademark it seem like the work of a bully.

The lesson here: Legal claims don’t exist in a vacuum. Examine the validity of your claims, but also think about the potential negative publicity and damage to your reputation before firing off cease and desist letters haphazardly or filing suit. Because even if you win in court, sometimes public opinion is the final judge. And no business wants to upset that judge.