Welcome back to Legal Geek. This week, with permission from Garrett and Kyle, we cover the trademark Cease and Desist received by the WeekSauce podcast this week from the holders of the Tabasco brands, and how that process works.
We've covered fun versions of Cease and Desist letters or demand communications in recent segments, but our Frogpants friends from AMoveTV received a serious type of letter in this form from McIlhenny Company, owners of the trademark portfolio for Tabasco. Kyle graciously allowed me to take a deeper look at the details, and it should help clarify for content creators what to do when this happens.
McIlhenny has actively protected the Tabasco brands for nearly 100 years, and so the letter to AMoveTV strikes the typical firm but understanding tone of modern C&D letters.
The brand manager for McIlhenny starts by listing some of the unauthorized uses on iTunes and the internet of the WeekSauce podcast logos which they deem to be problematic, and then provides a summary of the various trademark registrations held by the company. Several of these are also attached for review, and the letter goes on to explain that U.S. trademark law forces them to actively police and defend their marks to maintain the valuable rights against claims of dilution. The letter concludes with the demand for AMoveTV to stop use of the marks deemed objectionable. This is standard fare in this field, but it is well written and clear in this case.
Turning to the merits of McIlhenny's argument, most of the Tabasco trademark registrations cover the name itself Tabasco, the diamond shaped bottle label, and the diamond logo with the wording. Those are easily distinguished because AMoveTV is not using the name Tabasco and/or because many of these logo trademarks cover only the famous pepper sauce rather than other goods and services.
But one particular registration stood out on my review, and that is one from 1996 which covers just the square and circular lines forming the diamond logo, absent any wording. This was registered in many classes of goods and services, including apparel like T-shirts, food products, cocktail mixes, and restaurant services. This is a very broad way to cover the core of the company's famous logo, and it's a genius way to reach potential infringements that may not copy the words or other parts of all the other trademarks. And it's this very same registration that causes trouble for folks like Kyle and Garrett, even though podcasts are not explicitly within the scope of what is covered by McIlhenny's trademark. The problem is that use in another context can blur over time if AMoveTV brought out T-shirts or other merchandise using the WeekSauce logo, and the mark must also be policed against dilution which can occur if Tabasco did not enforce their rights in these types of close call situations.
Sometimes acts that are truly an infringement can still be done if they fall under the protections of Fair Use, including things like parody. That exception could be applicable here, but trademark litigation to try and prove that as a defense is costly and usually not worth the expense to smaller parties. Fair Use is a serious gray area that's honestly never that predictable in court. It's simply safer and easier to avoid infringement altogether, or take a license. In this case, Kyle and Garrett are changing the show logo, and sometimes that's just what you have to do. It doesn't feel great, but the big companies are forced into this by the U.S. rules on things like dilution, and the rest of us just have to deal with the consequences of the system.
The Bottom Line is, McIlhenny should be commended for finding such innovative ways to secure broad coverage of elements of their logo, but it leads to this downside. When in the position Kyle and Garrett found themselves in, it is best to be calm, breathe a minute, and then take a close look at the claims of the company enforcing their brand or other IP before deciding what action to take. The claims don't always have merit, after all, and that can open an opportunity for dialogue with the other side. If you can't figure it out yourself, please never hesitate to have an attorney help guide you to the best solution to the problem, even if it's not what you originally want to do.
But for now, we can all rejoice that WeekSauce and our friends are hotter than hot sauce. Boom.
McIlhenny has actively protected the Tabasco brands for nearly 100 years, and so the letter to AMoveTV strikes the typical firm but understanding tone of modern C&D letters.
The brand manager for McIlhenny starts by listing some of the unauthorized uses on iTunes and the internet of the WeekSauce podcast logos which they deem to be problematic, and then provides a summary of the various trademark registrations held by the company. Several of these are also attached for review, and the letter goes on to explain that U.S. trademark law forces them to actively police and defend their marks to maintain the valuable rights against claims of dilution. The letter concludes with the demand for AMoveTV to stop use of the marks deemed objectionable. This is standard fare in this field, but it is well written and clear in this case.
Turning to the merits of McIlhenny's argument, most of the Tabasco trademark registrations cover the name itself Tabasco, the diamond shaped bottle label, and the diamond logo with the wording. Those are easily distinguished because AMoveTV is not using the name Tabasco and/or because many of these logo trademarks cover only the famous pepper sauce rather than other goods and services.
But one particular registration stood out on my review, and that is one from 1996 which covers just the square and circular lines forming the diamond logo, absent any wording. This was registered in many classes of goods and services, including apparel like T-shirts, food products, cocktail mixes, and restaurant services. This is a very broad way to cover the core of the company's famous logo, and it's a genius way to reach potential infringements that may not copy the words or other parts of all the other trademarks. And it's this very same registration that causes trouble for folks like Kyle and Garrett, even though podcasts are not explicitly within the scope of what is covered by McIlhenny's trademark. The problem is that use in another context can blur over time if AMoveTV brought out T-shirts or other merchandise using the WeekSauce logo, and the mark must also be policed against dilution which can occur if Tabasco did not enforce their rights in these types of close call situations.
Sometimes acts that are truly an infringement can still be done if they fall under the protections of Fair Use, including things like parody. That exception could be applicable here, but trademark litigation to try and prove that as a defense is costly and usually not worth the expense to smaller parties. Fair Use is a serious gray area that's honestly never that predictable in court. It's simply safer and easier to avoid infringement altogether, or take a license. In this case, Kyle and Garrett are changing the show logo, and sometimes that's just what you have to do. It doesn't feel great, but the big companies are forced into this by the U.S. rules on things like dilution, and the rest of us just have to deal with the consequences of the system.
The Bottom Line is, McIlhenny should be commended for finding such innovative ways to secure broad coverage of elements of their logo, but it leads to this downside. When in the position Kyle and Garrett found themselves in, it is best to be calm, breathe a minute, and then take a close look at the claims of the company enforcing their brand or other IP before deciding what action to take. The claims don't always have merit, after all, and that can open an opportunity for dialogue with the other side. If you can't figure it out yourself, please never hesitate to have an attorney help guide you to the best solution to the problem, even if it's not what you originally want to do.
But for now, we can all rejoice that WeekSauce and our friends are hotter than hot sauce. Boom.
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