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By Peter Leung
How can a small cat-grooming service stand its ground in a trademark dispute against a luxury hotel known as a playground for celebrities? With a humorous and cutting response, of course.
In July, the Chateau Marmont, the famous Sunset Boulevard hotel that dates from 1929—known for celebrity guests such as James Dean, Led Zeppelin and Lindsay Lohan—sent a letter to a local cat-grooming service, the Cateau Marmont, demanding that it stop using the name and claiming a likelihood of confusion between the businesses.
The cat-grooming company fired back. Denying any likelihood of confusion, it pointed to the differences in services and prices—among other things. For instance, at the Cateau Marmont, “no bar services are offered to the cats at any time,” the company said.
The Cateau said that it did offer boarding services but also offered to settle the dispute by promising that it “will not expand into any hospitality services for humans.”
The humor serves an important purpose, R. Joseph Trojan of the Trojan Law Offices in Beverly Hills, Calif., who wrote the Cateau Marmont’s response letter, told Bloomberg BNA. The first draft was straightforward but, as he reviewed the case, it became clear that applying humor to the facts would be the best way to highlight weaknesses in the hotel’s arguments, he said.
“If you’re going to use humor, make sure that it’s humor that a judge will appreciate,” he said.
Cease and desist letters can be quite intimidating for small businesses, and humor can be a good counter, Eve J. Brown, managing partner of Bricolage Law LLC in Brookline, MA, told Bloomberg BNA.
Lawyers sometimes use excessive formality, and misleading legal arguments and citations, to make very broad demands that don’t stand up under scrutiny, she added. The use of humor and snark is a good response to cut away the formality and bring it back to a discussion between business owners, she said.
“You’re not a court, and you’re not a judge,” Brown said. “You need to get over yourself, because I’m not matching your formality.”
Bricolage is representing Breyting Coffee & Tea Co. in a trademark dispute with Monster Energy Co., the drink company. Breyting produces Fred Schneider’s Monster Blend, named after the 1984 song “Monster” by Schneider’s band, the B-52s.
Overly legalistic letters might not serve the demanding parties all that well either, Edward J. Timberlake, a trademark lawyer with the Forrest Firm PC in Durham, N.C., told Bloomberg BNA. Lawyers are used to writing to other lawyers and at times can revert to legalese which, in turn, may have come from a form letter that’s been in use for years, he said.
“It goes to persuasiveness—how you’re going to get the other side to hear what you’re saying,” Timberlake said. “The old model doesn’t do a good job, as you’re often sending letters to someone who doesn’t have a lawyer.”
To a lay person, the overly legalistic demand letter may come off as “bullying,” even if that’s not what the writer intended, and that can be an obstacle to the parties working out a solution, he said.
Timberlake also said that for many trademark demand letters, the law isn’t especially complicated, and there’s usually no need to include numerous case citations or excessive analysis. The most effective letter that he’s received, from the makers of the popular Cards for Humanity game, took a more casual and friendly tone, and even offered suggestions for how his client can proceed, he said.
Public backlash can also be a concern for big companies. Stories about large corporations looking like a bully, even if they may be acting within their legal rights, can be a headache.
“As a practical matter, you owe it to your client to remind them that this could end up online,” Timberlake said.
A humorous response can make it more likely that media outlets will take up the story. In July, the owners of the Olive Garden chain of restaurants sent a trademark cease and desist letter to the Vincent Malone, the operator of allofgarden.com, a fan site. Darden Concepts Inc. told Bloomberg BNA that the letter was automatically generated and sent in error, but not before several news outlets reported it. Many of the stories focused on Malone’s irreverent response, such as his request that Darden reply within nine days in limerick form.
Interestingly, Trojan said that the media had already picked up on the Chateau Marmont story before he was retained. He said that the hotel hasn’t replied to his letter, though he hopes that the parties can come to a amicable solution that protects his client’s interests.
“I think in a final settlement, we’ll make sure that they promise not to offer any catnip at their bar,” he said.
The hotel’s lawyer, Christopher M. Dolan of Barnes & Thornburg LLP in Chicago, didn’t immediately respond to a Bloomberg BNA request for comment.
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