Turning Lemons into Lemonade: How one Trademark Owner Protected its IP and Avoided being Branded a Troll

That old saying seldom rings more true than it does with the recent cease and desist letter sent out by Jack Daniel’s. It seems that Patrick Wensink, an author, used a cover for his book that was quite similar to the trademarked label of Jack Daniel’s. Rather than send him a scalding and legalistic attack letter, Jack Daniel’s chose to respond politely, going so far as to say that Jack Daniel’s was “flattered by [Wensink’s] affection for the brand” and offering to pay the costs of redoing the cover if Wensink chose to do so prior any reprinting of the book (but not demanding that Wensink do so). Wensink was so impressed that he posted the letter on his website, along with the following comment: “What follows is, perhaps, the most polite cease and desist ever written. If it wasn’t signed by some lawyer, I’d imagine ol’ Gentleman Jack penning it himself, twirling his bushy mustache.” The polite approach, being a quite atypical response, caught the attention of more than a few netizens, and the story went viral. As a result, instead of creating bad blood with a heavy-handed response to an underdog unknown author, Jack Daniel’s has secured the kind of publicity that money simply cannot buy. As of this writing, a Google search for “Jack Daniel’s polite demand letter” yielded 141,000 hits from all over the world, with the feel overwhelmingly positive.

The way this turned out really shouldn’t have been such a surprise. As Barbara Streisand taught us, (more…)

Intellectual Property and the U.S. Economy: Industries in Focus

In the post-Bilski/KSR/Prometheus regime patents are unquestionably a costlier and riskier investment. Statistics confirm this. Fifty percent of patent applications are abandoned these days, as opposed to only thirty-five percent in 2004. Paying more to prolong prosecution (via request for continued examination) restores the odds of success, but at a price. [USPTO statistics at www.uspto.gov/dashboards/patents] Even after the patent is awarded, of those subsequently litigated roughly 40% are declared invalid in court, many falling prey to the judicial shifts in patent law. Place all that against a backdrop of a relatively slow recovery from a relatively deep recession, and lingering cutbacks in research and development investment. A sage investor might have predicted a drop-off in patent filings, but just the opposite has happened. U.S. patent filings have increased steadily in recent years, and international patent filings have increased dramatically. Why? The Constitutional purpose of our patent system is to create incentives for innovation, and patent budgets have historically tracked R&D budgets. However, there are recent dynamics that disassociate the two. Patent trolling (by companies seeking only to profit from lawsuits) is on the rise. Reports estimate that there were five times as many patent trolling lawsuits in 2010 than in 2004. [Patent Freedom 2011] Defensive patent aggregation (to mitigate the risk of litigation from patent trolls) is on the rise. The number of U.S. patents granted to foreign companies and individuals is on the rise, exceeding the 50% mark in 2009 and continuing to date. [IFI Patent Intelligence]. Is the U.S. patent system broken? No, but she moves in mysterious ways and the statistics surely bear closer watching. The USPTO is beginning to take an active role in this, having established the Office of the Chief Economist in March 2010, and appointed Dr. Stuart Graham as its first Chief Economist. A few days ago the USPTO jointly released an ambitious report that directly or indirectly attributes forty million U.S. jobs to intellectual property: Intellectual Property and the U.S. Economy: Industries in Focus. http://www.uspto.gov/news/publications/IP_Report_March_2012.pdf  The report will convince you that the U.S. economy hinges on intellectual property. The only thing lacking is what to make of it? I’m already looking forward to the sequel.