Best of 2009: “All that know-chow costs some scratch!”
This was first posted on August 26, 2009.
Pet food giant Purina is like a dog that won’t give up its bone — or in this case, its chow. Three years ago, Purina sent a cease-and-desist letter to Chow, Baby!, a Baltimore area pet supply shop and Web site owned by Robin McDonald, asserting that its use of the “Chow, Baby!” name was likely to cause confusion with Purina’s CHOW trademarks and would dilute the distinctive quality of those marks. McDonald’s lawyer advised her that it would cost thousands of dollars to fight for the name and that she might lose anyway. As a result, McDonald took down the Web site. But she retained the name, Chow, Baby! for her local store, figuring that Purina wouldn’t find out about it.
Now, McDonald is ready to re-launch an Internet presence. But this time, McDonald decided to steer clear of a dogfight with Purina, and instead, changed her company’s name to “Howl, Baby,” subsequently shortened to Howl.
Would it really have cost McDonald “thousands of dollars” to tussle with Purina, or was her lawyer barking up the wrong tree when he dispensed that advice?
For someone who reads legal blogs, Carolyn Elefant asks a surprising question! No, it doesn’t cost thousands of dollars of anyone’s billable time to write up the argument about why Purina is out of line on a blog, as Carol does admirably at the link, or even a letter responding to Purina’s C&D. (Via Overlawyered.)
But there is not much use in arguing the merits of a claim with lawyers in correspondence, which I try studiously to avoid. Some percentage of attorneys above 50% knows both sides of the argument before putting a threat to paper, and your tutoring is seldom going to move their corporate clients. (In the case of smaller businesses, an “educational” response may be worthwhile, because there by virtue of your letter your adversary’s client may have the first chance to hear the other side of the argument — even giving your adversary the benefit of the doubt!)
In any case companies such as Purina are not interested in discussing the matter. Brand management isn’t a seminar. They are interesting in executing and maintaining a policy of complete domination of not only their brand equity space, but a comfortable semiotic buffer all around that space to the full extent that they can get away with it. Judges simply do not award fees or otherwise penalize brand owners for overreaching under the Lanham Act, though the Act empowers them to do so (the exceptions are notable and hence reportable).
For this reason it is worth it to Purina and companies like it — given the extant rules regime, it is a rational economic and corporate choice — to litigate these cases at the small risk of actually getting to a final adverse judgment regarding a trademark they have no right to anyway, as weighed against the much higher possibility that the other side will surrender $10,000, $25,000 or even $100,000 worth of fees into the process — dollars that are orders of magnitude more significant to the defendant (or declaratory judgment plaintiff) than for a corporation that probably has counsel on a retainer anyway.
So yes, Carolyn, thousands with a “small t” is probably an understatement. And that does not seem likely to change, unfortunately, in the foreseeable future. That’s the way the world works, my feline friends. As we always say here, trademarks — and now, we might well add, their penumbras and emanations — are all about catnip; consumer protection, once the conceptual heart of the matter, is today so much kitty litter.