The United States and Patent Trademark Office (USPTO) will examine the extent to which US businesses are harmed by trademark owners’ overly aggressive litigation tactics, if a US senator's proposed study gets the green light.

Senator Patrick Leahy proposed the study in a new bill, the Trademark Technical and Conforming Amendment Act 2010, which was passed by the US senate late last week. As well as making some technical amendments to the Lanham Act, the bill calls for a study into US litigation practices because, as Leahy explained, there are fears that some mark owners are seeking to enforce their rights beyond a reasonable interpretation of the scope of the rights. “I am concerned that large corporations are at times abusing the substantial rights Congress has granted them in their intellectual property to the detriment of small businesses,” said Leahy. "When a corporation exaggerates the scope of its rights far beyond a reasonable interpretation in an attempt to bully a small business out of the market, that is wrong.”

Daniel Ballard of Sequoia Counsel, a firm representing small to medium sized enterprises, agrees that there is a problem. "The cases where outside counsel for big brand owners are overly aggressive in 'enforcing' their client’s marks are legion," he told WTR. "The underlying dynamic is clear – and understandable: the brand owner can easily be persuaded to go along with an enforcement action because its mindset is that it owns every conceivable variation of its mark, logo, or tagline."

Other practitioners are not so sure that there is an issue. Ryan Gile, author of the Las Vegas Trademark Attorney blog and an attorney at Weide & Miller, who describes himself as having been "on both sides" in David v Goliath cases, thinks that a study is unlikely to uncover anything the industry does not know already: that it is just the way the system is. "One person's trademark bullying is another person's attempt to protect their brand," Gile said. "Most rights holders are not trying to be a trademark bully but really trying to stop other people using a similar mark in connection with a similar type of good so that they can later make claims to having a famous trademark."

On announcing the bill, Leahy pointed out a recent case in which Hansen Beverage Company, producer of Monster Energy Drink, sought to enforce its rights in various MONSTER trademarks against a small brewery that sells the Vermontster beer. The brewery is based in Vermont, Leahy's constituency. When WTR asked whether this had any influence over the proposal, one of Leahy's 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."

The Trademark Law Technical and Confirming Amendments Act will also harmonize the system for submitting maintenance filings to the USPTO and permit the director of the USPTO to accept applicants' corrections to good faith and harmless errors.