Aggressive trademark litigant decries ‘trademark troll’ label; warns major brands not to ignore cease-and-desists 26 Jul 16
A self-proclaimed ‘aggressive’ enforcer of trademark rights and frequent filer of IP infringement litigation action has told World Trademark Review that he primarily initiates disputes with major brands because cease-and-desist letters sent by small business owners are often ‘ignored or not taken seriously’. Furthermore, he revealed he may consider legal remedies against parties – including the media – that refer to him as a ‘trademark troll’.
Designer, and former IP paralegal, Robert G Lopez owns LES Clothing, a small fashion business that sells a range of products related to the Lower East Side of New York City. In 2014, he secured the US-wide trademark registration for the term LES NYC in Class 25 for various clothing goods. This followed a three-year dispute with the USPTO on whether the mark was geographically descriptive, in which Lopez prevailed after stating that he has a “long-standing and continuous” use of the term in relation to clothing, which he claims goes back as far as 1999.
Despite only getting the registered trademark in 2014, Lopez has begun many trademark infringement litigation actions over the years against major fashion retailers and designers that sold clothing with designs related to New York’s Lower East Side – including J Crew, Urban Outfitters, Gap, Macy’s, Puma, Bloomingdale’s and, most recently, Forever 21. Data from Lex Machina shows he has filed 19 trademark-related lawsuits since 2009, eight of which were filed in 2016 and 70% of which reached a ‘likely settlement’.
Talking to World Trademark Review, Lopez said the only way he is able to pursue these infringement cases is because of his extensive IP background – he worked as a paralegal for a sole practitioner for 13 years before leaving in 2013 to focus full-time on LES Clothing. “A lot of small business owners may have particular rights in a brand name, design or other similar business asset, and be in a position where those rights are violated but don't have the necessary resources, knowledge or capability to do what I have done in the course of my various lawsuits,” Lopez explained. “The average small business would never be in a position to do what I do because IP litigation is notoriously expensive: what small business owner can afford to pump 50, 100 or even 150 thousand dollars into fighting an IP litigation? Particularly when many larger corporations have unlimited financial resources available to them or specific budgets to engage in IP litigation."
Indeed, it is this financial aspect that has led to some in the IP community to label Lopez a ‘trademark troll’ because of a claimed ‘goal of extracting monetary settlements’ from ‘larger brands with deep pockets’. Lopez voiced his frustration at the label, calling it a derogatory term being given to someone that is legally required to defend their trademark rights (and claimed he has resolved some prior disputes through consent or co-existence agreements). “I looked into the term 'trademark troll' as I'd not heard of it before, and I do not agree with that characterisation,” he said. “I look at myself as a small business owner that is fortunate enough to be in a position to go against some of these major corporations that have violated my IP rights,” Lopez continued. “I actually think labelling me a trademark troll is disparaging – instead of portraying this in the light of a small business owner attempting to limit the unauthorised use of my brand, they immediately jump to conclusions and make statements that are damaging to my reputation or even to how I'm looked at or perceived in my efforts to continuously enforce my rights.”
Going forward, Lopez said he may request any media outlet that labels him as a trademark troll to issue a retraction: “I have been overwhelmed with a lot of ongoing legal pursuits and dealing with the day-to-day running of my business, so that has prevented me from exploring any remedies that are available to me. But I find the claim disrespectful based upon my long-standing efforts, including securing protection in my business properties, and the term opens up potential claims of liability for misrepresentation – and that is still not off the table."
Arguably, the ‘trademark troll’ term would not have been used without the high number of litigation actions that Lopez has brought against major fashion brands. But he says that he feels there is no choice but to seek legal remedies because, for the most part, cease-and-desist letters have proved to be ineffective. “Some of these bigger companies will automatically see me as a small business owner not represented by counsel, and they themselves will be represented by some of the biggest law firms in the country. Therefore, they will look at my cease-and-desist letter – sent by me individually – and will put it in the drawer and laugh or will pay it no attention and pretend it doesn't exist,” he claimed. “But if I commence a litigation action, that will get their attention because, as a business entity, they are legally required to respond. So when undertaking enforcement efforts, instead of waiting idly by for months for an acknowledgement of my letter, which in most instances will never happen, I put myself in a stronger position by initiating the action and picking a venue – and making sure I’m the one to throw the first punch."
Therefore, could many of these lawsuits – a number of which are ongoing – have been avoided? Lopez admits that, perhaps, they could have. “I would be open to different forms of resolving these disputes, and I have in the past entered into licensing or co-existence situations and I would like to continue on that path if at all possible,” he explained. “But ultimately there are some instances where that isn't an option because it is difficult to get to the initial stage where we can begin discussions. So a piece of advice I'd give to representatives at bigger companies is not to ignore legal letters just because they're from small business owners – because, for me personally, I’m going to continue aggressively enforcing my rights in the LES NYC brand and keep building and expanding the business as I've always intended to since the very beginning."
One tangible takeaway from our chat with Lopez is that practitioners working at or representing major brands should pay appropriate heed to cease-and-desist letters – and that even those sent from small businesses may be from people who are more IP-savvy than they appear to be on the surface.
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