By Trevor Little
October 25 2011
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:
On the latter, she explains: “One person has suggested a small claims-type court, another suggested making a proposal to the USPTO, while a third suggested a UDRP-style administration hearing.”
At present, Chilling Effects offers catalogues of cease and desist notices and presents analysis of their claims, and Pearson envisions a wider role for the Brand Bully Basement: “Chilling Effects provides a forum for the legal wrangling (specifically cease and desist letters, and responses) whereas I hope to fill the gap and provide a forum for the stories behind the claims of infringement. My hope is that enough people will use this resource that the press will come to rely on it and, recognising that, brand owners will avoid it like the plague.”
Central to this will be creating an accepted definition of ‘trademark bullying’, something the USPTO study did not resolve. Many trademark counsel have opposing views on this issue, with one person’s bullying another’s legitimate enforcement. Presently there is no ‘one size fits all’ checklist that can be applied to ascertain bullying, but Pearson roots it in over-exertion when asked how she identifies bullying: “As famously stated by Justice Potter, ‘I know it when I see it’. When a burger joint moves into town and makes a car wash change the name its used for 18 years, when a liquor maker makes a graphic designer change the name she's used for 20 years because its ads have gained renown in the art world, when a troll demands a settlement fee in lieu of unwarranted TTAB proceedings, those things are all instances of bullying and yet the trade associations and USPTO act like it's just little infringers crying ‘poor me’. Not so. Although there is no bright-line test (yet), but generally I think bullying occurs when a brand owner exerts rights it does not have.”
The ultimate philosophy behind the Basement seems to be shaping an environment in which brand owners and trademark counsel are not restricted in the enforcement of their rights for fear of negative publicity, but which does facilitate a gentler approach and tackles those instances where it could be argued a brand owner has over-reached. Considering the approach counsel should take, Pearson notes: “I think civility would be a good place to start. Business owners, or their attorneys, picking up the phone, calling the other side, explaining their goals and finding mutually acceptable paths to a reasonable resolution. It happens all the time in my world, but I don't think it's standard industry practice.”
Bound up in this is the requirement to enforce your mark and one suspects that the definition of ‘bullying’ adopted by the Basement will come under scrutiny by many trademark owners. What is clear is that, five months after the USPTO’s report was given a lukewarm reception, attempts to address bullying are picking up momentum.