Fake Cease-and-Desist Letter Has No Teeth
The Florida chapter of a journalist’s trade group recently released a satirical letter asking Pres. Donald Trump to stop using the phrase “fake news” because they intend to trademark the term. California trademark attorney Ted Hasse explained that’s not how it works.
Even if the cease-and-desist letter were not satirical, it would have no teeth. Trademark owners cannot block non-trademark use of trademarked terms.
Hasse explained that owners of trademarks often launch cease-and-desist letters but that does not mean they are enforceable. Naive recipients of the letters, however, might not be wise to the toothless gambit. Even an unenforceable cease-and-desist letter could instill fear or tend to suppress otherwise free speech.
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Video Transcript:
The president of the Florida Chapter of the Society of Professional Journalists says her journalism organization is trying to trademark fake news to stop Donald Trump from using it. Is this serious and can this be done?
My name is Ted Hasse I’m at Wirth Law Office.
I’m intellectual property attorney license to practiced in California. Now want to just start off by a disclaimer and being either taking a look at the cease and desist letter that they’ve already sent to President Trump and it ends this way:
“If you fail to comply with our request we may pursue legal action but of course this is satire which is very different than what you refer to as quote ‘fake news.’ It might be asking too much for you to realize the difference.”
Signed Society of Professional Journalists Florida Pro chapter.
Now this news is is making the rounds and I was just asked about whether this is for real whether they can do this. There is a whole media and ethics sort of aspect to this story that I’m not qualified to talk about but you know, let me talk about the law. In short as to whether this is real well yes and no.
Can they do this? No. This isn’t how trademark law works but I do want to talk a little bit about the cease-and-desist aspect of this as well. First,l registration for a trademark does not create the trademark. Trademark rights precede the registration. It’s sort of a memorialization of those claimed rights so filing an application for a registration for a trademark for fake news means that the Florida Chapter of the SPJ claims they’re using it as a trademark to designate the source of their goods or services.
Now there’s already a company, a beer company, that has trademark registration for fake news that has gone through the full process and reached full registration. Now they can prevent the SPJ or anybody else from selling beer under the trademark name fake news including Donald Trump. However they can’t prevent other people from coming along and registering the trademark fake news for other goods and services.
For example the marketing of absurd publicity stunts could be a service that you might designate under fake news however they can’t stop people from using the term fake news in a non trademark way. So they can stop somebody from selling beer as fake news and if somebody else can come along and and you know develop trademark rights around some other goods or services but none of them stop Donald Trump or anybody else from using the term fake news in everyday speech descriptively.
Now how is this gonna work in the end it may not be a lawful application for trademark law on the part of the SPJ although it may begin maybe they’ll successfully get a registration. However as I pointed out that doesn’t mean they can stop somebody from using the term descriptively but if they’re sending cease and desist letters unsophisticated parties may not understand that this effort to restrict their speech is something that’s not going to hold up in court.
Thousands and thousands of cease and desist letters get sent every day with legal claims that won’t hold up in court and sometimes the recipients even know they won’t hold up in court but they’re to have to end up in a legal fight with somebody with more resources and what can end up happening is people don’t do the things they’re wanted to do because they’re they’re facing frivolous claims from from other parties.
So, if you get a cease and desist letter related intellectual property contact an intellectual property lawyer. Talk to somebody who really knows and they can tell you whether this is serious or not what you need to do and how to approach the response.
