Sophisticated trademark owners recognize that their trademark rights are dynamic — even if their trademarks aren’t famous for purposes of dilution — they can grow or shrink over time, depending on the magnitude of their own use and their response to third party violations.
It is no wonder then that trademark owners are prepared to expend significant resources, at least to maintain the scope of their initial rights, to protect the value of an important intellectual property asset, and in doing so, they act with the law of trademarks on their side. Importantly, a proper balancing of the many likelihood of confusion factors determines the scope of rights for marks that are not famous (for purposes of dilution protection).
So, if the original scope of rights associated with a particular non-famous mark is represented by the black-colored concentric circles on the target, and the bullet holes represent third party unauthorized uses of confusingly similar marks, and if the trademark owner takes no action against them, then over time, the trademark owner’s scope of rights easily can shrink down to the center of the bullseye, where the trademark owner is only able to control identical marks in connection with directly competing goods.
Professor Ken Port at the William Mitchell College of Law has been exploring the “trademark bullying” issue for some time, he has graciously offered some comments to our writing on the topic here and here, and later this week, he will join Minnesota Representative Joyce Peppin and others to discuss Trademark Bullies – A Problem in Need of a Cure? at the Midwest IP Institute in Minneapolis, Minnesota.
Of course, one of the challenges with so-called “trademark bulling” is the need for a workable definition, and this must precede any intelligent dialogue about what to do with conduct that fits the definition. Although we have written extensively about many aspects of the topic, my views on a proper definition have not changed much since my first post on this topic three years ago: The Mark of a Real Trademark Bully. Yet, the effort to develop an appropriate definition continues.
Earlier this month, Professor Port presented a seminar at William Mitchell where he offered this definition:
“Trademark Bullying occurs when there is evidence that a trademark holder asserts a non-famous mark against a non-competing entity on or in connection with goods or services into which the plaintiff has no reasonable expectation of expanding.”
One significant concern with this definition is that it applies a pejorative label — and presumably adverse consequences to those who wear the label — to conduct that is likely within the scope of rights enjoyed by a trademark owner under current law.
The law fully contemplates a trademark owner asserting rights against non-competing entities and there is no requirement — in showing likelihood of confusion — that the trademark owner must have a reasonable expectation of expanding their offerings to the point where they will compete. This definition, it seems to me, places determinative weight on the “bridge the gap” factor that only some courts consider in the likelihood of confusion balance.
So, as I read it, this definition, not only snares completely legitimate activity by a trademark owner, but it also seeks to rewrite the law of likelihood of confusion in a way that dramatically reduces the scope of rights held by existing trademark owners.
What do you think?