Trademark Dispute Against My Favorite Author
My favorite author, Leo Babauta, just got a trademark infringement letter due to one of his blog posts. And he’s fighting back!
Leo wrote the phrase “feel the fear and do it anyway,” in a post about beating your fears. Now he’s written a great public response to the trademark owner.
Who’s right here? Let’s see!
I am a Virginia attorney, but this post isn’t legal advice for anyone, including the parties at issue in this dispute.
What is a trademark?
A trademark identifies the source of goods and services. For example, “Nike” is a trademark for shoes and all sorts of other athletic goods. When you see “Nike” on a pair of shoes, you know who made them. You know what type of quality you can expect. The trademark tells consumers like you a lot of information about the product.
But a trademark doesn’t give Nike the exclusive right to use that word. It basically just means that someone else can’t use the word as the brand for their shoes. That would confuse consumers.
What is trademark infringement?
If I started my own shoe company called “Nike,” I’d be in big trouble. That is classic trademark infringement.
Similarly, if I called my shoe company “SNike,” I’d still probably be infringing Nike’s trademark.
The legal test is whether or not the alleged infringer is using a trademark that is likely to confuse consumers as to the source of the applicable goods and services.
How does this apply to Leo?
Susan Jeffers holds a federal trademark registration for “FEEL THE FEAR…AND DO IT ANYWAY.” She actually owns several registration for that precise trademark, for different goods and services.
The main trademark registration at question here is probably registration # 3338961 for these specified services:
Education services, namely conducting seminars, workshops and training programs both in person and online, and the production of video and television programs in the field of psychology, spirituality, personal development and self improvement.
But the real question is: How did Leo use the trademark?
He wrote a blog post that used the phrase “feel the fear and do it anyway” deep within the content.
Here’s the key: Leo didn’t use the phrase as a trademark. Susan Jeffers doesn’t own the exclusive right to “feel the fear…and do it anyway.” She just owns the right to use that phrase as a trademark on certain goods and services.
Even if Leo’s blog post is close enough to the registered goods and services, it seems unlikely that Susan Jeffers could prove any confusion about the source of those goods and services.
In fact, several people commented on Leo’s original post, pointing out that Susan Jeffers wrote a book on the topic of beating fears. People seem very clear about who wrote what and where the services are coming from.
Who would win in court?
Here’s where years of law school pay off: I can’t say for sure without doing more research. 
I do know that I wouldn’t send a cease and desist letter for a client in a situation like this.
Update – 4-28-09 – Raptitude has an interesting article on this topic.
Free consultation. Call Andrew: 540.318.5824
13 Comments
David M. Brown, MD
Thank you for that post Andrew. That helps clarify the issue. It does seem like Dr. Susan Jeffers’ attorneys are a little trigger happy. It’s important to clarify what trademark infringement is. I appreciate some input from an attorney on this. Leo’s blogpost certainly struck a chord as he had 100 comments on it in under 2 hours! I think we should all be Tweeting “Feel the Fear and Do It Anyway” ! @ZenDoc and also @EarthDay09.
Apr 27th, 2009
COD
Wouldn’t it funny if hundreds of bloggers picked up on this and wrote blog posts using the phrase “Feel the Fear and Do It Anyway.” One can only imagine what that would do to Dr. Jeffer’s legal bills
Apr 27th, 2009
Andrew Flusche
@David – I’m glad the post was helpful. It certainly doesn’t cover everything that’s applicable to this issue, but I hope it boils down the heart of the matter to something that everyone can understand.
@COD – I definitely don’t encourage doing things like you suggest (which I assume is in jest). But occasionally using someone’s trademark in speech or online shouldn’t be a concern for the mark owner.
Apr 27th, 2009
Michael Morales
Thanks Andrew for the clear insight into trademark infringement. Now, could the opposing counsel abandon the trademark infringement theory and pursue a copyright infringement claim? It would seem that this theory could be more appropriate and actionable.
Apr 27th, 2009
Andrew Flusche
@Michael – Generally speaking, winning a copyright infringement claim based on a 7-word phrase would be difficult, if not impossible. Many hurdles would have to be overcome, such as the fair use defense.
Apr 27th, 2009
Gayle Hurmuses
Andrew, regarding your comments to @COD, I disagree, while I would not suggest to anyone that they post the phrase in defiance (as such a suggestion MAY be actionable), it would in fact be brilliantly funny if a groundswell of disgust led to such an occurrence.
I find this sort of attempt to kidnap the language and hold it hostage to be annoying at best and disgusting in general.
Apr 27th, 2009
David Cain
Hi Andrew,
Good to hear about this from someone with some legal knowledge. I wrote an article about this last night, take a look:
http://www.raptitude.com/2009/04/get-up-stand-up/
I think it’s important to talk about but I can’t claim to know much about what this means legally.
Thanks,
I’ll link your post from mine.
Apr 28th, 2009
Andrew Flusche
@David – Thanks for pointing out your article. Quite a good read! And thanks for the link; I helped out with yours as well.
Apr 28th, 2009
David Cain
Right on Andrew, thanks again.
Apr 28th, 2009
Steven Melendez
Actually Andrew, I did just what you didn’t recommend, and for exactly the reason Gayle mentioned, out of sheer disgust at the lawyers outrageous claims toward Leo. I couldn’t help myself, screw the legal ramifications basically. I personally feel that any lawyer who tries to “cease and desist” someone over general ‘talking’ (in the internet sense of talking anyway) should have their degree torn up and be disbarred for stupidity on an enormous level… Then again, I am not a lawyer, just a humble web guy, so what do I know
Apr 29th, 2009
Chiron O'Keefe
Great article, and very timely for me. I’ve been contracted by an e-publisher to release my novel. She’s been giving me grief since I reference Winnie-the-Pooh characters. She says I could be sued by Disney. Here is an example of the references.
In one case the character is wearing Tigger pajamas. In other case the character is bantering with another character and says that Pooh bear is a lovely archetype.
Is she right? I’m not selling a book about these characters and it’s a fiction novel. She’s now decided to hold back publication and says I’m using trademarks which could get us sued. I had to change a scene where two characters are meeting in Starbucks because she claimed that was trademark infringement. My husband says she’s completely wrong because I’m not selling any products or linking myself to a product.
From what I read in your post, I think he’s right. Could you clarify for me?
Thanks so much, I really appreciate this.
Best,
Chiron O’Keefe
Jun 24th, 2009
Andrew Flusche
@Chrion – Thanks for the comment. Unfortunately, I cannot give out legal advice on the blog. However, I will say that books can usually refer to brands in the story under the doctrine of fair use or “nominative use.” I suggest referring the publisher to a trademark attorney if they are worried about your content.
Jun 24th, 2009
Chiron O'Keefe
Thanks so much for responding. I do realize you can’t give out legal advice and I appreciate the advice.
Best,
Chiron
Jun 25th, 2009
Post a comment