Friday, October 15, 2010

USPTO Seeks Comments on Trademark Bullies You Have Known

The U.S. Patent and Trademark Office is requesting comments (here) on the following topic: "the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner." Please send your comments by January 7, 2011 to TMFeedback@uspto.gov.


The PTO is looking for "feedback from U.S. trademark owners, practitioners, and others regarding their experiences with litigation tactics, especially those involving an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner. The USPTO also is eliciting suggestions to address any allegedly problematic litigation tactics." It requests that commenters address the following points:

1. Please identify whether you are a trademark owner or practitioner, and the general size and nature of your business or trademark practice, including the number of trademark applications and registrations your business has, or your practice handles. Please note that the USPTO will fully consider any comments you submit, even if you choose not to identify yourself in a particular manner.

2. In approximately the last 5 years, please describe any instances of which you have first-hand knowledge where a small business may have been the target of litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.

3. Please describe situations where you have been involved in receiving a cease-and-desist letter. Anecdotal information might include, but is not limited to, a description of whether the letter resulted in the small business ceasing its use of one or more marks, or whether the sender of the cease-and-desist letter withdrew or abandoned its demands against the small business owner.

4. Please describe situations where you have been involved in trademark litigation in state or federal courts. Anecdotal information might include, but is not limited to, a description of whether the lawsuit settled on the basis of the small business agreeing to cease its use of one or more marks, or on the basis of the plaintiff withdrawing or abandoning its trademark-related allegation(s). Alternatively, relevant information might include whether such lawsuits resulted in a court judgment and the nature of the judgment (such as requiring the small business to cease its use of one or more marks, assessing monetary liability (damages, lost profits, or attorneys’ fees) against the small business, requiring the plaintiff to pay the defendant’s attorneys’ fees, or imposing sanctions against the plaintiff under Rule 11 of the Federal Rules of Civil Procedure).

5. Please describe situations where you have been involved in opposition/cancellation proceedings instituted at the USPTO against small business owners. Anecdotal information might include, but is not limited to, a description of whether the proceedings settled on the basis of the small business agreeing to abandon its application(s) for one or more marks, or whether the proceedings settled on the basis of the plaintiff withdrawing or abandoning its notice of opposition or cancellation petition. Alternatively, relevant information might include a description of whether such proceedings resulted in a decision by the USPTO Trademark Trial and Appeal Board (“TTAB”) refusing to register/canceling one or more marks owned by the small business, or whether such proceedings resulted in the TTAB imposing sanctions against the plaintiff under Rule 11 of the Federal Rules of Civil Procedure.

6. Do you think trademark “bullies”[1] are currently a problem for trademark owners, and if so, how significant is the problem?

7. Do you think aggressive litigation tactics are more pervasive in the trademark area than in other areas of the law?

8. Do you think the USPTO has a responsibility to do something to discourage or prevent trademark bullying? If yes, what should the USPTO do?

9. Do you think the U.S. courts have a responsibility to do something to discourage trademark bullies? If yes, what should the U.S. courts do?

10. What other U.S. agencies may have a responsibility to do something about the problem?

11. Do you think Congress has a responsibility to do something to discourage or prevent trademark bullying? If yes, what should Congress do?

12. Please provide any other comments you may have.

According to the USPTO, "A trademark “bully” could be described as a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow."

TTABlog comment: Individuals can be trademark bullies too! I know of one who terrorized the trademark landscape until a few years ago. Or was he merely a trademark troll?

Please list your "favorite" trademark bullies in your comment to this posting (I suggest anonymously).

Text Copyright John L. Welch 2010

26 Comments:

At 8:19 AM, Anonymous Anonymous said...

The negative impact of trademark ignoramuses should be included here. So much of mark policing is dealing with infringers who did no mark clearance or even knew you need to do it. So often you hear claims that they feel entitled because they were able to secure a corporate name or a domain name. They often refused to move until you incur the expense of suing them. While you often can get compliance then, you often cannot fully recover your cost of enforcement against the target, if you get anything. If "bullies" impose an unwarranted cost (a name change) on a weakling, should we not also care about the cost imposed on legitimate mark rights by trademark ignoramuses?

 
At 9:26 AM, Anonymous Anonymous said...

Monster Cable

 
At 9:58 AM, Anonymous Anonymous said...

Kellogg North America Company, noted a year ago yesterday on The TTABlog as the most frequent inter partes filer of oppositions, cancellations, and requests for extension of time to oppose.

http://thettablog.blogspot.com/2009/10/ttablog-special-report-who-files-most.html

Moreover, KNA Co. is sloppy in its filings and settlement correspondence and overreaches outlandishly, causing unnecessary, burdensome and unjustifiable expense and delay in rights acquisition for its targets.

 
At 10:07 AM, Anonymous Orrin A. Falby said...

Any resulting policy on this, in my opinion, would be an overreach.

 
At 10:21 AM, Anonymous Anonymous said...

MONSTER cable are monster a-holes when it comes to filing notices of oppositions for *anything* with "monster" in the mark. They are as bad as Stoller IMHO.

 
At 10:32 AM, Anonymous Anonymous said...

This may be an example of "bullying". If the allegations are true, LEGO's refusal to consent to the importation of the competing SMART BLOCKS toys appears to be an abusive use of its trademark rights.

 
At 11:24 AM, Anonymous Anonymous said...

Intel
Pinkberry
Apple
Tacori

This is fun . . .

 
At 12:31 PM, Anonymous Anonymous said...

Monster Cable, of course.

Intel has an inflated opinion of the distinctiveness of its mark. INTEL is coined? Really? Actions against InteLife Travel Agency and American News Intel Publishing are particularly head-scratching.

But maybe the problem is that I've never been able to wrap my head around how dilution by blurring works for marks that are common English words.

 
At 12:41 PM, Anonymous Anonymous said...

Trek Bicycle Corporation

Major League Baseball =
major league TM bully

 
At 3:11 PM, Anonymous Anonymous said...

MLB for sure

 
At 6:42 PM, Anonymous Anonymous said...

Amazon Technologies (amazon.com), for:
1.) boilerplate objecting to ALL interrogatories, admission requests, document production requests, providing no substantive discovery responses. (Board granted motion to compel);
2.) “document dumping” in discovery over 31,000 pages with no index, not chronologically ordered, not kept as in usual course of business (Board granted motion for sanctions); and
3.) producing thousands of additional supplemental document responses (16 months late), after the Board ordered response due date, and discovery closure.

 
At 8:29 PM, Anonymous Anonymous said...

I have come across several cease and desists sent by "Hansen Beverage Company," the owner of MONSTER energy. These cease and desists are generally far fetched, but, when I tell my clients that it's Hansen Beverage ( a 2 billion dollar company), they off course wish to abandon their mark even though it's nowhere close to being an infringement. In the future I will be involved in various pro bono TTAB appeals, it seems.

 
At 2:05 PM, Anonymous Anonymous said...

The Trustees of the Coppola Family Trust (yeah, the movie guy) who own three marks that incorporate the word DIAMOND and are busy opposing any other winery that tries to register a DIAMOND mark. This despite a substantial number of DIAMOND registrations and wine labels pre-dating the Coppola marks. Most of their victims are small wineries who lack the funding to defend against an opposition, let alone a court battle, so there has been no review of the issue by the TTAB.

 
At 10:37 PM, Anonymous Anonymous said...

Monster Cable is the worst! I cant believe the USPTO allows this type of thing to go on!!!!!! They Leo x 10..........Come On

 
At 10:42 PM, Anonymous Anonymous said...

I agree Monster Cable. have a closer look at these idiots......

 
At 1:46 PM, Anonymous Paul Reidl said...

We need to take a deep breath here. As in any substantive area, there are companies and lawyers who will bring "push the envelope" cases, the financial impact of which is generally greater in the trademark area because most of those claims are not insured against. Because there is no cost-shifting and it is so hard to get meaningful sanctions or attorneys fees, this is tough on any defendant.

Having said that, most of the claims of bullying that I have heard come from small companies who either did not do their homework before adopting their mark, or who do not understand that a registration does not bar a claim by a prior user or registrant even if the Examining Attorney reviewed it, or who think that there is a "small guy" exception in the Lanham Act.

From a public policy standpoint, I think this effort (which was inserted into the last TM bill by Sen. Leahy) could open a Pandora's Box of potential legislative "fixes" that could be worse than the problem.

 
At 5:06 PM, Anonymous Anonymous said...

The NFL. Its assault on retailers who advertise "Get supplies for your Super Bowl party here!" -- clearly a nominative fair use -- is the prototype for trademark bullying. Seeing scared retailers substituting "the Big Game" for "Super Bowl" makes me angry each time I see it.

 
At 4:06 PM, Anonymous Orrin A. Falby said...

Thanks Paul for saying so eloquently, what I tried to raise in my previous posting.

 
At 12:04 AM, Anonymous Anonymous said...

Yep, Monster Cable.

 
At 12:40 AM, Blogger Ron Coleman said...

These comments hit most of my favorite targets -- the NFL, yes; LEGO, I suppose so, but oddly enough, sometimes not.

I hope you'll forgive me for embedding all those links, John, but what better way to underscore the extent of my agreement both in specific and in general?

 
At 9:17 AM, Anonymous Anonymous said...

Does anyone have any experience with small trademark trolls trying to extort a monetary settlement from established companies by claiming reverse confusion?

 
At 12:55 PM, Anonymous Steve Baird said...

What about the appropriate level of culpability for labeling a trademark owner as a "trademark bully"? While it appears to be doing what it has been told to do in asking the questions about "trademark bullies," I tend to think that the PTO is casting a net that is way too wide when it seeks information about those who assert trademark rights "beyond what the law might be reasonably interpreted to allow." Seems to me that a mere negligence standard based on reasonableness is, well, not reasonable, for many of the reasons already stated by other commenters: http://www.duetsblog.com/2010/10/articles/the-mark-of-a-real-trademark-bully/

 
At 4:26 PM, Blogger Ron Coleman said...

Steve, I think you are forgetting the fundamental legal principle, from which the rare departure is justified only upon a showing of cause, of Virga quod calx may effrego meus ossa tamen lacuna can nunquam vulnero mihi.

Tacitus, wasn't it?

 
At 11:44 AM, Anonymous Anonymous said...

Katz Communications, Inc., div. Clear Channel Communications, Inc.

 
At 11:04 PM, Anonymous Anonymous said...

Monster Cable is horrible

 
At 4:43 PM, Anonymous Anonymous said...

Facebook!

Anything with "face", "book", and soon, I'm sure, the letter "f" has been or is going to be challenged... even if it has nothing to do with social networking.

 

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