Trademark Bullies Beware

No one likes a bully, and that includes “trademark bullies.”  One definition of “bullying” is, to treat in an overbearing or intimidating manner (synonym = intimidate).  So how exactly does one intimidate others with trademarks?  Through aggressive litigation tactics by those with power against those with limited resources.  The U.S. Patent and Trademark Office (USPTO) provides the following definition:

“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.”

The USPTO is concerned about this type of bullying. In fact, the Office is currently requesting feedback from U.S. trademark owners, practitioners, and others regarding their experiences with trademark bullying, and is eliciting suggestions to address these problematic litigation tactics.

The USPTO is interested in learning,

  1. 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; and
  2. The best use of Federal Government services to protect trademarks and prevent counterfeiting.

Want your voice heard on this matter?  Contact TMFeedback@uspto.gov, with the subject line “Small Business Study” by January 7, 2011.  Feel free to answer any/all of the following questions in the body of your email:

  • 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.
  • 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.
  • 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.
  • 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).
  • 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.
  • Do you think trademark “bullies” are currently a problem for trademark owners, and if so, how significant is the problem?
  • Do you think aggressive litigation tactics are more pervasive in the trademark area than in other areas of the law?
  • Do you think the USPTO has a responsibility to do something to discourage or prevent trademark bullying?   If yes, what should the USPTO do?
  • 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?
  • What other U.S. agencies may have a responsibility to do something about the problem?
  • Do you think Congress has a responsibility to do something to discourage or prevent trademark bullying?   If yes, what should Congress do?
  • Please provide any other comments you may have.