This week, I attended a webinar hosted by Anaqua, a firm that provides “Intellectual Asset Management Software and Services.” The webinar featured David Gooder who is the Managing Director & Chief Trademark Counsel of Jack Daniel’s Properties. This is not a plug for Anaqua or for Jack Daniel’s. It is a review of some of Mr. Gooder’s insights into the risks and benefits of owning a top tier brand. (To view the webinar, click here).

Jack Daniel’s is a trademark. The Jack Daniel’s brand is what people feel when they hear or see the trademark. Core values are at the heart of every brand. They are the compass that guides the brand owner’s decisions. Mr. Gooder identified three core values of the Jack Daniels brand: Independence, Authenticity, and Integrity. Mr. Gooder and his team believe that people are drawn to the brand because it evokes a feeling of independence and they believe that people are drawn closer because they associate the brand with authenticity and integrity.

The power of a brand such as Jack Daniel’s enables its owner to exploit the trademark through licensing its use on non-core products. This accomplishes three things, Licensing:

  • Builds up brand recognition by increasing the number of times that the public encounters the trademark
  • Strengthens the trademark by associating it in consumers’ minds with a broad range of products, in addition to core products
  • and generates revenue – easy revenue!

Jack Daniel’s began a licensing program 20 years ago and revenues have topped $100,000,000. Trademark owners have a duty to prevent others from infringing their marks. The strength of the Jack Daniel’s brand makes the trademark a very attractive target for infringers of all types from people peddling look-alikes, to down and dirty counterfeiters.

Garden variety trademark infringers have given us spirit products such “Jeka Daniels” and “Jake Danileas.” These sound-alike names are often used with graphics similar to those on Jack Daniel’s labels. This is not uncommon and it is relatively easy to stop.

The other end of the spectrum is counterfeiting. Mr. Gooder shared some pictures that are easy to remember. In one, a man was pouring amber liquid from a dirty plastic five gallon container into glass bottles shaped like a Jack Daniel’s bottle. Next to him was a box of counterfeit Jack Daniel’s labels. On the next slide was a picture of the man holding his hands behind his back and an officer securing him in zip tie handcuffs. Authorities around the world are concerned, more or less, about counterfeit goods, but they are especially concerned about counterfeit comestible goods.

In my last tidbit, I touched on the topic of trademark bullies, and so did Mr. Gooder. He cited examples of aggressive trademark owners being publicly rebuked for overzealous enforcement actions. Then he shared a story about what has come to be known as the most polite cease and desist letter ever written. A member of his team addressed it to an author who published a book with a cover that bore a strong resemblance to a Jack Daniel’s label.

The letter explained why trademark owners are obligated to take action in these situations so that their marks are not weakened. Instead of a demand, the letter concluded with a request that he change the cover when the book is reprinted, and included an offer to contribute a reasonable amount if he was willing to change the cover sooner. Two things happened. The number of visitors to the Jack Daniel’s web site spiked (those who left comments were unanimous in their approval of the letter), and sales of the book exceeded all expectations. Mr. Gooder believes that it is important to be true to the core values of a brand when enforcing trademark rights. Coming down hard on counterfeiters and politely coaxing compliance out of relatively harmless infringers just might be what Jack Daniel’s would have done.

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