The USPTO’s study into trademark litigation tactics failed to shed any new light on the issue of bullying, but a public meeting has been set to discuss the potential role IP associations can play in providing legal education programs on trademark policing. At the same time, a new initiative aims to establish a trademark bullying clearinghouse. The first challenge will be defining when enforcement becomes bullying.

Earlier this year, the USPTO published its study into trademark litigation tactics. As reported in WTR, the study came under fire from trademark practitioners. Critics argued that it was too narrow in its sampling and did not really provide a true sense of how prevalent bullying is, with Julia Huston, chair of the trademark group at Foley Hoag, stating that “the study did not tell us anything that we did not already know. The study revealed that some people think that over-aggressive trademark enforcement is a problem, and some do not.”

However, a number of recommendations were laid out. Amongst these were encouraging the private sector to provide free or low-cost legal advice to small businesses via pro bono programs and IP rights clinics, and to offer legal education programs focused on trademark policing measures and tactics.

The USPTO has now announced a public meeting to consider how such legal education programs can be conducted, but in the five months since the study’s publication, others have also looked at how to address this emotive issue.

One is Lara Pearson, chair of the trademark team at Rimon Law Group and author of the Brand Geek blog, who has announced the ‘Brand Bully Basement’ to “try to fill the mandate from the USPTO's report”. First unveiled on the eTrademarks list serv hosted by Carl Oppedahl, Pearson is currently finalising an advisory board for the service and told WTR she has identified four main goals for what she hopes will become a clearinghouse for cases of trademark bullying:

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RE: Paving the way for a trademark bullying clearinghouse

Mr. Duke commented that this is an utter waste of time and money. My question is whose?

The seven people (including two past INTA Presidents) who have joined the Brand Bully Basement Advisory Board do not think so, nor do I.

We intend to follow through on the charge issued to us by the USPTO by proposing workable solutions to a problem faced by many of our clients -- trademark owners asserting rights they do not have.

Lucky for Mr. Duke and his client, Zippo Manufacturing if they have not experienced this. Zippo itself has filed only 8 TTAB proceedings and 9 federal trademark infringement suits since the Mid-90s, so it appears to use the force of the law only as necessary, except maybe the case against Zippo news service . . .

Lara Pearson, Rimon Law Group on 02 Nov 2011 @ 19:01

Paving the way for a trademark bullying clearinghouse

Another utter waste of time. Let's spend more money we don't have on a problem that is only a problem is someone's mind. Make more regulations, increase costs and accomplish nothing. This is ridiculous, to say the least.

Charles Jeffrey Duke, Zippo Manufacturing Company Inc on 26 Oct 2011 @ 15:01

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