We’ve spilled a lot of digital ink discussing the trademark bullying topic, going all the way back to my original blog post from 2010: “The Mark of a Real Trademark Bully.”

Within the last several days, there has been quite a bit of online media coverage about Trademarkia’s new features that tout an ability to “Find a Trademark Bully” or rank the “Biggest Bullies“.

Maybe I’m missing something, but it appears that the only investigative skill required to apply the label is one’s ability to count the total number of oppositions filed by a trademark owner.

So, nevermind the size of a trademark owner’s portfolio, nevermind the strength or possible fame of the trademarks within a trademark owner’s portfolio, nevermind the number of conflicting applications filed by third parties who don’t search or aren’t well-advised about likely conflicts, nevermind the reasonableness of the trademark owner in working to resolve and settle those concerns, nevermind the trademark owner’s appropriate litigation conduct during the opposition proceeding, and perhaps most importantly, nevermind a qualitative analysis of the actual facts and claims asserted by the trademark owner — ignoring all this, we’re led to believe that if a brand owner files a lot of trademark oppositions, it automatically earns the pejorative label “Biggest Bullies”.

If all it takes to make Trademarkia’s Top Ten Biggest Trademark Bullies Listing is filing more trademark oppositions than anyone else, does it really have any value for the stated purpose?

The last time I checked, every week of every year the USPTO issues scores and scores of Section 2(d) refusals (based on a perceived likelihood of confusion) (hat tip to Towergate Software) — refusals that are eventually withdrawn and resolved through the USPTO’s consideration of apparently valid argument, evidence, and/or amendment (or a combination of these).

Does that make the USPTO a surrogate trademark bully because it issues a lot of registration refusals and throws up a lot of registration road blocks based on likelihood of confusion, especially since many of the refusals end up being withdrawn upon further consideration, after hearing only one side of the argument — the Applicant’s side (and without any required notification of the trademark owner whose registrations were cited)?

When those initial USPTO refusals are withdrawn based on a one-sided limited record, is there no surprise that oppositions will be filed? Is there no surprise that oppositions will be filed when the USPTO doesn’t see a valid conflict for whatever reason? That’s why serious trademark owners watch their marks — the process doesn’t purport to be perfect. Afterall, the purpose of an opposition is to provide a second backstop before registration, so that the USPTO can consider both sides, on a more complete record, making it an essential part of keeping the federal trademark register intact.

From my perspective, boiling the question down to a numbers game might gain headlines, spark some drama, fan the flame, generate more web traffic, but it doesn’t add to the conversation.

In the end, I’m left wondering whether Trademarkia has purchased insurance coverage for “advertising injury” claims, and I’m also left wondering how long it will take for a brand owner on the infamous list to take issue with the labels as false and/or misleading.

What do you think about the labels Trademarkia is applying to brand owners?

  • Chris

    I thought Trademarkia’s labeling was reckless. As you’ve pointed out, the number of opposition filings alone says almost nothing “bullying”. Trademarkia’s “Biggest Bullies” list seems like an attempt to capitalize on one of the more widely discussed issues in trademark today. This tactic has certainly been successful; the bully list has been covered by most of the publications I keep tabs on.

    Raj Abhyanker, Trademarkia’s CEO, more or less admitted that the “bully” label is inappropriate. When asked about how his company was using the term he said:

    “Whether they are bullying or not, I would not be the one to say. The public is best placed to make that judgement. What we have done is make that information available to the world. So whenever a company opposes a mark, the public has visibility to that and can share that. We show all the marks – we don’t pass judgement over whether a company is bully or not.” (http://goo.gl/TcVjW)

    How producing a list entitled “Biggest Bullies” does not represent Trademarkia passing judgment is left unexplained. I guess “Most Active Opposers” or “Most Oppositions Filed” just didn’t sound sexy enough.

  • Alexander Butterman

    Great response to the write-up about, or occurence of, Trademarkia’s purported list of “trademark bullies.”

  • Flacobelle

    Those who file the most oppositions are Trademarkia’s customers so why would Raj care about offending them. He’s after the business of the “victims.” Referring to them this way endears him to his potential clients. It’s just marketing.

  • stevebaird

    Flacobelle, thanks for your comment, interesting dialogue – I think you mean to say “Those who file the most oppositions are not Trademarkia’s customers” right? I tend to agree that Raj appears to be pandering to those who he labels as “victims”.

  • Agi Vezer

    A few years ago, the USPTO went so far as to eventually bar one real bully and notify everyone he had bullied, whose behaviour had previously been praised by the media as the little guy protecting his IPR against big bad business. That single dude bullied a large number (can be confirmed) by filing Requests for extension of time to file Opposition and in the meantime sending demand letters accompanied by licences. Dude is not on Trademarkia’s list.

  • stevebaird

    Agi, good point, Leo is not on the list, thank goodness! If I’m understanding Trademarkia’s emoticon labels correctly, if he were still active at the USPTO, he might have earned Trademarkia’s “Heckler” label for filing lots of Extensions of Time to Oppose.

  • Agi Vezer

    Perhaps Trademarkia is designing an extra special trademark worthy emoticon just for him.

  • REW_in_DC

    I’d like to ask if the jurisdictions that are now requiring taxicabs to have a certain color and font (trade dress) would also be in line for being bullies, albeit municipal ones? Using a local example (DC): “Are all vehicles required to be painted in the uniform color scheme? / All licensed DC taxicabs are required to adopt the new color when an equipment change is required due to age or mileage limits or DMV inspection failure.” http://dctaxi.dc.gov/page/uniform-taxicab-color-design-incentive-program. However, DC’s offering a little sugar to sweeten the bad taste: $200 incentive to paint cabs in the red/silver/”swoosh” scheme; http://dctaxi.dc.gov/release/dc-taxicab-commission-offers-limited-number-uniform-color-vouchers although companies must get approval for their logos from the Commission.