PERSONAL AND CONFIDENTIAL
Re: Trademark Infringement of “Got Milk?”
Dear Sir or Madam:
We represent the California Milk Processor Board, which owns the federally-registered trademark “Got Milk?”® (Reg. Nos.1,903,870 and 2,689,741). It has come to our attention that Hip Mama is selling t-shirts and tank tops with the phrase “Got Breast Milk?” on them.
Our client has spent a great deal of time, money, and effort to develop the goodwill surrounding the “Got Milk?” trademark and corresponding marketing campaign, and does not allow anyone to use the trademark or a confusingly similar mark without its authorization. Part of the goodwill attached to our client’s trademark lies in its use of the distinctive “Phenix American” font. Over the last twelve years, the unique font and style of the “Got Milk?” trademark have attained particular value because of the trademark’s widespread popularity. Our client has not authorized Hip Mama to use the “Got Milk” trademark in any way. An evenhanded review of Hip Mama’s use of the “Got Milk?” trademark demonstrates that it is acting in total and willful disregard of our client’s intellectual property rights.
If Hip Mama has purchased these products from someone you believe is an authorized “Got Milk?” licensee, please provide me with the name and contact information of this individual. If we are able to verify that this person is licensed to sell “Got Milk?” products we will notify you of this fact and withdraw the demands presented in the balance of this letter.
A trademark is infringed by use of a word or phrase that is likely to cause confusion. In deciding whether there is a likelihood of confusion, “[s]imilarity in appearance, sound and meaning strongly support a finding of likelihood of confusion between two trademarks.” Hip Mama’s use of “Got Breast Milk?” on t-shirts and tank tops is likely to cause confusion with our client’s “Got Milk?” trademark because both statements are similar in: 1) appearance; and 2) sound.
First, the phrases “Got Breast Milk?” and “Got Milk?” are very similar in appearance and only differ slightly due to the addition of the word “Breast” to “Got Breast Milk?” Second, the two phrases sound alike.
Many courts have also “recognized that the second comer has a duty to so name and dress his product as to avoid all likelihood of consumers confusing it with the product of the first comer.” Hip Mama has done very little to ensure that consumers will not be confused as to the origin of its products that contain the phrase “Got Breast Milk?”
Accordingly, it is beyond dispute that Hip Mama’s sale of t-shirts and tank tops with the phrase “Got Breast Milk?” on them violates our client’s trademark rights.
Our client intends to vigorously defend its rights in this trademark under all applicable federal laws. Federal law provides our client with the right to bring a civil action against Hip Mama. Potential remedies include recovery of profits, monetary damages sustained by our client, statutory damages, a court order for the seizure of goods and counterfeit marks, costs of bringing the lawsuit and injunctive relief. Federal law also grants a judge discretion to award treble damages and attorney’s fees.
At our client’s discretion, they may choose to forego actual damages and profits and instead elect to receive statutory damages. The court may award between $500 and $100,000 for each counterfeit mark. Furthermore, if the court finds that your use of the counterfeit mark was willful, it may award up to $1,000,000.00 for each counterfeit mark.
In order to avoid resorting to litigation, we insist that you comply with all of the following demands:
1. Immediate cessation of all sales and marketing activity related to the “Got Breast Milk?” items, as well as any other materials that infringe our client’s “Got Milk?” trademark.
2. Ship to us, no later than February 5, 2008, all “Got Breast Milk?” items, as well as any other materials that infringe our client’s “Got Milk?” trademark. You must bear the cost of this shipment.
3. Ship to us, no later than February 5, 2008, all graphic design materials you use to manufacture all “Got Breast Milk?” items, as well as any other materials that infringe our client’s “Got Milk?” trademark. This includes, but is not limited to, all mesh design screens, lettering and computer-generated materials that you use to manufacture these products. You must bear the cost of this shipment.
4. Immediate destruction of all catalogues that contain all “Got Breast Milk?” items, as well as any other materials that infringe our client’s “Got Milk?” trademark.
5. Immediate removal of all “Got Milk?” and “Got Breast Milk?” product images, as well as any other materials that infringe our client’s “Got Milk?” trademark from all of your online catalogues and websites.
6. Provide to us, no later than February 5, 2008, an accounting of all profits that Hip Mama has made at any time from the sale of all “Got Breast Milk?” items, as well as any other materials that infringe our client’s “Got Milk?” trademark. The accounting must state: (a) the amount of revenue that you generate through the sale of all “Got Breast Milk?” items on a weekly, monthly and yearly basis; (b) the length of time the “Got Breast Milk?” product images have appeared on your website(s); and (c) the amount of both “hits” and unique visitors that your website(s) receives on a weekly, monthly and yearly basis.
In addition, once we receive the information relating to the accounting for all profits, we will insist on being paid all profits. If you are not immediately forthcoming in complying with all of our demands, we will increase our demand to cover all attorneys’ fees incurred. If we are forced to file a lawsuit, we will pursue all available remedies, including treble damages.
If you do not meet the above-referenced February 5, 2008 deadline, we will be forced to commence litigation against Hip Mama.
Very truly yours,
Lawyer, Lawyer, and Lawyer
* * *
Lawyer, Lawyer, and Lawyer:
Thank you for your letter. I’m confident that Hip Mama’s T-shirts never infringed on your client’s trademark. No reasonable person would be confused by the parody. However, it will comfort The California Milk Board to know that Hip Mama has not sold “Got Breast Milk” T-shirts for years, never made a profit on them, has none in stock, and has no plans to revive the line.
I hope you won’t think it’s rude at this point, but I’d like to recommend a book. I think both you and your client will be interested in CREATING A WORLD WITHOUT POVERTY: SOCIAL BUSINESS AND THE FUTURE OF CAPITALISM by Muhammad Yunus and Karl Weber. It’s full of ideas about how to use your time, resources, and considerable talents. I’m sure you agree that there’s so much to be done in this world beyond chasing down small business owners who once parodied your slogan.
Wishing you lasting joy,
Owner, Hip Mama