Unicorns and Zebras: Trademark Enforcement in the Age of Social Media

Saturday morning I turned on my phone and began my day the way I do almost every day:  I checked my Twitter feed (yes, I’m one of those people).  Being a real estate attorney who follows a lot of real estate people on Twitter, I noticed several Tweets having to do with zebras and even a hashtag, #savethezebra.  Upon doing some sleuthing through some friends’ profiles in an effort to figure out why the heck they were promoting a “Zebra Defense Fund”, I unearthed the reason for all of this:  a Washington-based real estate group, The Lones Group, Inc. on Tuesday filed a lawsuit against real estate agent and blogger Daniel Rothamel, known to people as “The Real Estate Zebra.”  The suit alleges trademark infringement on the basis of Mr. Rothamel’s use of zebra-themed imagery and trademarks which The Lones Group alleges diverts business from it.  Inman News has an excellent summary of the suit, including a link to the actual complaint, here .

The response to The Lones Group’s suit has been almost unanimous – and completely in support of Daniel Rothamel.  There’s even a “ZebraDefenseFund.com” website where people can donate to Mr. Rothamel’s legal expenses.  Most of the comments I’ve seen refer to the lawsuit as “frivolous” or “asinine.”

This reaction reminded me of a similar incident that played out online last April.  Several years ago ThinkGeek, a Web site devoted to selling gadgets, nerdy T-shirts and brainy games, decided to sell some fake products for April Fool’s on its Web sites. Now its sale is a yearly tradition.  2010’s offering was “Canned Unicorn Meat” which was billed as “an excellent source of sparkles.”  ThinkGeek chose as the tagline for its nonexistent delicacy “Unicorn, the New White Meat.”

Apparently, the National Pork Board, an organization devoted to pork and related businesses and farms, did not find the product ad as funny as the rest of us.  Instead, it saw a threat to the national brand of pork, otherwise known as “the other white meat.” So the organization engaged its large, national outside law firm to send ThinkGeek a cease-and-desist letter, which it did – twelve pages in total. 

Not surprisingly, the cease-and-desist letter was not only ignored – if you go to ThinkGeek’s website, the unicorn meat ad is still there – it was lampooned in a blog post entitled “The Best Cease and Desist Letter We’ve Ever Received.”  The whole episode resulted in negative publicity for the National Pork Board and its attorneys (who shall remain nameless in this article for fear of their sending another letter). 

Setting aside the merits of these legal actions for a moment – and on their face, without digging deeper, each of these actions may have had merit —  what these stories evidence is just how powerful social media has become in today’s society.  More importantly, these stories show that when the trademark enforcement action involves an online medium such as a blog, it is imperative to coordinate the legal action with an online communications strategy, lest online opinion turn against you, and quickly. 

I have no idea how The Lones Group’s lawsuit will play out.  Based on the initial reaction, however, it would appear that if the objective of the suit was to protect damage to The Lones Group’s reputation, that objective has failed miserably, as the jury has already rendered a verdict in favor of Mr. Rothamel.