Thursday, November 04, 2010

Trademark Bullying: Birth of a TTAB Affirmative Defense?

The USPTO's recent request for comments regarding trademark bullies [TTABlog posting here] has set tongues wagging and minds turning. TTAB veteran Jack Clifford recently posed a new version of the "unclean hands" affirmative defense in Kellogg North America Company v. Malt-O-Meal Company, Opposition No. 91196938: trademark bullying.

Kellogg opposed Malt-O-Meal's application to register the mark FROSTED TUMBLE WHEATS for breakfast cereal, claiming likelihood of confusion with its registered marks FROSTED MINI-WHEATS, MINI-WHEATS, and MINI-WHEATS LITTLE BITES for cereal products.

Malt-O-Meal's answer includes the following allegations in its Affirmative Defenses:

5. Opposer has engaged in a practice of "trademark bullying" which is described as trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might reasonably interpreted to allow.

6. According to research published by "TTAB Across the Board" [See TTABlog posting here], Opposer filed the most TTAB proceedings and extensions of time to oppose requests with the TTAB in 2009, and Opposer's trademark portfolio is far smaller than that of many others.

7. Opposer has previously opposed a large number of applications filed by Applicant where the grounds of the opposition were dubious, weak, or exaggerated. Opposer is attempting to unfairly raise the cost of entry for Applicant to compete in the marketplace by filing this and other groundless oppositions with the TTAB.

8. The longstanding and habitual practice of trademark bullying engaged in by the Opposer gives the opposer unclean hands and bars relief to Opposer.

9. Applicant is a small business that is harmed by Opposer's litigation tactics wherein Opposer attempts to enforce its alleged trademark rights beyond a reasonable interpretation of the scope of the rights legitimately granted to the trademark owner.

Let's keep our collective eye on this one. Of course, what one party sees as "bullying," the other sees as "necessary policing efforts." Let's see how the TTAB sees it.

Text Copyright John L. Welch 2010.


At 9:45 AM, Anonymous Erik Pelton said...

Fascinating! Thanks for sharing.

At 9:54 AM, Anonymous Anne Gilson LaLonde said...

This reminds me of the ability to allege reverse domain name hijacking under the UDRP, bringing a claim "primarily to harass the domain-name holder." It will be interesting to see if the claim has any teeth at the TTAB, unlike under the UDRP.

At 10:37 AM, Anonymous Tal Benschar said...

This reminds me of the "sham litigation" claims made in antitrust and patent cases and Noerr-Pennington Doctrine. The Supreme Court set the bar very high to show that a claim is a "sham" -- it has to be objectively baseless (i.e. frivolous -- essentially a violation of Rule 11) AND it has to be brought subjectively for an improper purpose, i.e. not to win, but to burden the other side with litigation costs. See Professional Real Estate Investors, Inc., v. Columbia Pictures, 508 U.S. 49 (1993). Otherwise, liability cannot attach for bringng such litigation.

There is a good reason why the bar is set so high. The first amendment protects, among other things, the right to petition the government, and filing a complaint in court (or a notice of opposition in the TTAB!) is a procected petition of government. Unless the petition is utterly frivolous and a sham, it is protected. (Just because you lose a case does not mean the case was frivolous.)

So while "trademark bullying" could conceivably be a proper defense, it should be a very narrow one.

As for this particular case, the marks themselves are inherently weak -- they are bordeline descriptive (maybe they were even held to be descriptive). That usually requires more policing than completely arbitrary marks. (Policing in terms of legitimate competitors who have gone over the line, not counterfeiters.)

At 11:29 AM, Anonymous Nancy Dwyer Chapman said...

I mentioned Kellogg's bullying in the comments for the original post (anonymously). Full marks to Mr. Clifford for asserting this affirmative defense; I wish him complete success and look forward to updates on this strategy.



At 2:49 PM, Anonymous Anonymous said...

This defense was actually first asserted by Paul Fields in Kellog v. Loftex. See Op No. 91192915 - Answer filed on July 19, 2010.

At 7:07 PM, Blogger John L. Welch said...

But he didn't use the magic words, "trademark bullying."

At 7:58 AM, Anonymous Erik Peltoin said...

The defendant, by consent, specifically withdrew its affirmative defenses related to 'bullying' at the same time it expressly abandoned its application pursuant to an agreement between the parties:


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