A Trademark Infringement – An Alternative Solution


It’s easy to be so close to a problem that an out-of-the-box solution is hard to visualize. We have found that by closely examining the problem from all sides and comparing it to other challenges you face, you are more likely to discover the “elegant” solution – a simple solution that solves multiple problems. Over the years, our education, professional practices, and experience have brainwashed us to think that certain types of problems can only be solved in certain prescribed ways. Legal – get a lawyer. Poor sales – advertise more. Negotiation – meet in the middle, and so on.

What guiding principles did we use at Barefoot Cellars to arrive at out-of-the-box solutions to conventional problems? Here’s an example of a seemingly insurmountable problem we faced and how we solved it:

A Trademark Infringement Problem

Many folks think that getting a trademark is protection in itself. It is not. Many folks think the government enforces the trademark. It does not. When you have an international brand, you must have trademarks all over the world. And, more importantly, you have to exercise constant vigilance to ensure that nobody is infringing upon your “marks”. If you allow someone to copy your mark, you can lose it in that jurisdiction. You can enforce your rights in a civil or administrative court. But that means you have to pay lawyers to write cease and desist letters, make threats, and file lawsuits. It can lead to a legal battle that can last years and cost hundreds of thousands of dollars. After a prolonged period of time, it usually comes down to whoever has the most money wins.

Well, we didn’t have much money when a large distiller in a big European country copied our mark on one of their products. When we first asked them to stop and cited our EU trademark, they implied that we didn’t have a prayer, citing their huge budget and in-house legal department. They said we couldn’t sustain a protracted lawsuit in a foreign country. Even though our trademark counsel advised we likely would eventually win, they were right! So this forced us to take an entirely different approach.

Our Out-of-the-Box Solution to the Trademark Infringement Issue

We wrote a letter to all the retail buyers that carried both the infringer’s products and our products. The letter stated the infringement, showed our trademarks and advised the buyers of confusion in the marketplace where both products were sold. We stated that we were not responsible for the quality of the infringer’s product. No buyer wants his customers to complain about being confused. No buyer will knowingly carry an illegally infringing product in his stores.

But we didn’t send the letters out just yet. Instead, we sent copies of the letters to the Chairman of the infringer’s Board with a note that read, “These letters are scheduled to go out today at 5PM PST.” The Chairman called us within an hour!

By identifying all who benefited by trademark compliance, and by realizing that, after all, even the infringing party did not want to cause problems for his buyers, we were able to quickly solve the problem outside of the legal process and without further fees. Sometimes you have to take the ten-thousand foot view to see other facets to your problem, who else is affected, and discover new ways of resolution. Being undercapitalized forced us to seek a more imaginative and frugal solution, once again proving that money does not solve all problems.