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United States - USPTO silent as attorneys pour scorn on trademark bullies study

By Adam Smith
May 09 2011

While many trademark attorneys and academics across the United States continue to brand the study into trademark litigation tactics as “worthless”, the USPTO has said it “will not comment” on the criticism.

Fierce censure is pouring forth from the trademark attorney community for what became known as the ‘trademark bullies study’, which was published recently, over a month later than its due date. “The study is too thin on research and sampling to be of any value in confirming even whether the bullying problem exists, let alone to what extent it is sufficiently pervasive to merit special attention,” comments Dennis Prahl, a partner at Ladas & Parry in New York. Other observers argue that the research walked over old ground. According to Julia Huston, chair of the trademark group at Foley Hoag, “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.” In short, Huston adds, the study was “a giant waste of taxpayer money”.

For his part, blogging IP academic Eric Goldman commented last week that the report had been “totally co-opted by the trademark owner constituency and thereby was rendered worthless”. It is a “complete whiff”, he concluded.

There is certainly no shortage of criticism for the study, but the USPTO declined to respond to it nevertheless. Instead, a spokesperson addressed the lack of participation, affirming that: “We actively promoted the survey through a range of communications vehicles including our website, social media (Facebook, Twitter) and e-newsletters.” And yet only 79 lawyers participated in the research, and only 13 completed the survey. Comments Prahl: “I don't know what it cost to produce, but if I were a client receiving it I would review the bill carefully.”

The trademark community was largely split over the merits of the study in the first place: attorneys representing small businesses generally welcomed it, while those acting for larger clients (whose enforcement tactics are occasionally described as “bullying”) were not too comfortable with it. When the study was launched by Senator Patrick Leahy, it was seen as a favour to one of his constituents -  Leahy did not try to hide the connection between his interest in trademark litigation and the fact that the producer of Monster Energy Drink had recently sought to enforce its rights in various MONSTER trademarks against the brewer of the Vermontster beer, which is based in Leahy’s home constituency. However, when WTR asked Leahy’s office whether this had any influence over the proposal, one of his staffers replied: "There is a scenario in Vermont that relates to the call for the study, but that can be said of other scenarios in the country."

Some leading trademark figures argue that there is definitely a problem. Speaking in February, J. Thomas McCarthy warned brand owners against sending “shock and awe” cease and desist letters. In a typically erudite address at a Microsoft-hosted symposium, McCarthy recommended tailoring cease and desist letters, and avoiding scare tactics. When WTR put it to him that this was a bold suggestion to give to a room full of US attorneys, he stated: “Well, they need to be told.”

But this new study admits the problem in answering the original question posted by Congress in ordering the research. It states: "Given the limited data available, it is extremely difficult to determine the extent to which trademark owners may be purposefully overreaching when enforcing their rights, and doing so with sufficient regularity for it to qualify as a significant problem."

It still manages to come up with some recommendations, which have been rejected by many trademark attorneys. “The recommendations of education and pro bono legal services are neither helpful nor realistic in terms of free legal services,” notes Jim Bikoff, chairman of the IP and internet practice group at Silverberg Goldman & Bikoff. Adds Prahl: “The study's recommendations essentially rely on private sector lawyers offering a lot of free education, advice and representation as well as on the federal government doing more outreach.  I do not think the former is likely to happen or the latter likely to help.”

The USPTO confirmed to WTR that the study has been delivered to Congress, which will decide what action, if any, to take. But Bikoff recommends abandoning it. He says: “Any effort to go further based on this study should be discontinued.”

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