This past week I’ve been pondering a question of great importance: When might a straitjacket double as a life vest? The answer actually arrived last Monday during INTA’s “The Ethics of Trademark Bullying” panel discussion at the 135th Annual Meeting in Dallas, Texas.

In so many words, our good friend and wise guy Ron Coleman, over at Likelihood of Confusion, described the “trademark bullying” panel as, let’s say, rather muzzled. While I agree that one had to strain to hear any insights, perspectives, or opinions, I prefer the more comprehensive straitjacket metaphor (Hannibal Lecter style) over the mere muzzle, because it obstructs well beyond simple vocal chord vibrations and stills the wildest of “dangerous” body language too, even the likes of this little guy’s gyrations. Yet, Ron critiqued the audible portion of the panel discussion and explained the unfortunate situation this way:

“Similarly, want to talk about trademark bullying?  Briefly mention two or three examples (oddly enough, using “the same examples you might find mentioned in this article) and conclude that they’re not really bullying (kind of like in that article, actually!) (and no — don’t cite the article!  Duh!).  Apologize for not discussing any actual examples of trademark bullying because doing so might offend a the-INTA member company, or, aw shucks, one of my clients, wouldn’t you know? (This actually happened – again resolving, definitively, my original dumb question.)  Then come around to the edgy, original conclusion that maybe we shouldn’t write dumb cease and desist letters any more — you know, what with these crazy kids and their Intertubes and all.”

“It’s easy to crack wise, but the reason, Mr. Wiseguy Blogger, those guys are up there on the panel and you are not is that the people on the panel understand what to say and when to say it.  And when not to say it.”

“And, not to get to all Kurt Gödel about this, but you.  Do.  Not.”

A non-attorney friend of mine recently described how he plans to provide valuable insights and information on his forthcoming blog, but he also “will certainly poke the bear.” The “bear” in his non-legal industry, that is, not a cute, cuddly teddy bear. So, if INTA is an industry bear, Ron, consider it poked (more than a few times). Well, I suppose, it’s not my first time either.

Anyway, back to the problems with INTA’s “trademark bullying” panel discussion (after seeing IPKat’s similar perspective, does that make this post the “tipping point” on the subject?).

In short, Caveat Emptor (“let the buyer beware”) was the word of the hour.

There were so many caveats offered by the moderator at the outset, I lost track of them, except this one: To avoid offending any trademark owners or their counsel, the panel would limit themselves to “just the facts,” no opinions or “judgments” about whether any “trademark bullying” lines have been crossed.

Call me crazy, but I’m thinking more than a few trademark types pay four figures to register for the Annual Meeting, expecting more than legal facts (facts without analysis or opinions can more easily be found on most Big-law firm websites and blogs) — instead, hoping for some valuable insights, perspectives, and well, opinions on the subject at hand, but by all means, answer some questions (or, at least ask some questions of the audience).

Perhaps the juxtaposition of these images says it all:

So, if some other form of “time” actually had “permitted” and the panelists actually had been inclined or “permitted” to share their opinions or “judgments” about the examples or topic, what might you have asked them about trademark bullying?

Last, while we’re on the subject of caveats, INTA might be wise not to forget this one: Caveat venditor (“let the seller beware”). If INTA doesn’t remove the straitjackets from their speakers and also find qualified speakers who won’t self-impose them, the number of trademark types filling nearby hotel rooms to attend the UN-TA may begin to outnumber those paying four figures to register for the official INTA event.

And, recognizing the heavy dose of irony contained in the coming link, when will “ambush marketing” begin to target INTA events?

It’s such a slippery slope.

Seth Godin is someone we follow closely here on DuetsBlog, and he has just weighed in on the “trademark bullying” topic.

We haven’t always agreed with his trademark advice, especially his misapprehension of the benefits of federal registration. But, it’s hard to argue with this conclusion: “When a brand becomes a bully, it loses something vital.”

The problem, of course, is that it begs the question of who deserves to wear the pejorative “trademark bully” mantle.

I’ve argued against the social media shame-wagon approach to applying the label, against a quantitative approach, and the size of the actor isn’t determinative either; far more instructive is a qualitative analysis of the alleged examples of overreaching, and let’s not forget how important tone can be too.

Godin’s target is the International Olympic Committee (IOC), for violating the law of common sense, in pursuing “knitters and improv comedians and authors of children’s books, dry cleaners, and Facebook users“.

I’ll admit I don’t know the facts of any of these trademark enforcement examples (and the links didn’t spell them out), so undertaking a qualitative analysis of them would be difficult, but focusing purely on “common sense,” only seems to encourage that opinions and decisions be made in a vacuum, seems to assume away the need for any knowledge or understanding of the applicable laws, and also seems a lot like focusing on what is “reasonable” (an inherent problem in the definition):

“I’ve heard before that ‘reasonable’ minds can differ on just about anything. And, in my experience that is especially so when it comes to arguing and deciding trademark disputes, where litigants argue over and decision makers are asked to carefully balance the evidence according to a number of multi-factor tests, including likelihood of confusion, trademark fame, likelihood of dilution, and bad faith intent to profit, to name just a few. This isn’t exactly black and white material. Then, add to all that, an understanding that trademark rights are dynamic, not static, their scope can shrink or grow over time, and also recognize that trademark attorneys have an ethical duty to zealously represent their clients.”

Of course, the OLYMPICS brand sits in a very unique position as compared to most trademark owners because Congress granted very special protection in the word OLYMPIC to the U.S. Olympic Committee, see  Title 36 of the U.S. Code in Section 220506.

I also agree with Seth Godin’s words: “You can’t build a brand by trying to sue anyone who chooses to talk about you.” But, I guess I’m not seeing that here — at least, in the examples given. So, talk is fine, but operating a business under a name using the word Olympic is something quite different.

So, what do you think about the IOC and the applicability of the “trademark bully” label?

Minnesota State Representative Joyce Peppin, is convinced that “trademark bullying” is a problem and that it requires a brand new law in Minnesota to properly deal with it.

Representative Peppin apparently is a law student at William Mitchell College of Law, and she has teamed up with other students and William Mitchell law faculty to write and introduce into the Minnesota State House, a bill entitled the “Small Business Trademark Protection Act” (H.F. 2996).

The body of the proposed bill makes no reference to “small business,” nor does it attempt to define “small business,” but it does purport to define “trademark bullying” this way:

 “[T]he practice of a trademark holder using litigation tactics in an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark holder.”

As presently written, the proposed Minnesota state law would require the following:

  1. All trademark cease-and-desist letters sent to a Minnesota entity by an entity with a presence in Minnesota must contain specific language notifying the recipients of their right to a settlement conference through the Minnesota Office of Administrative Hearings; not available after suit has been commenced by any party.
  2. The primary purpose is said to assist the parties in resolving disputes and the secondary purpose is said to identify and label cases of “trademark bullying.”
  3. The timing, format, and additional requirements are detailed, e.g., how the conference shall not exceed eight hours unless the parties and the judge agree otherwise.
  4. Attendance by parties or their representatives is mandatory; if the party starting the dispute won’t participate, it is liable for a $1,500 fine and the attorney fees, costs, and disbursements incurred by the other party.
  5. At its own cost, any party may provide information such as expert testimony, industry practice standards, and evidence of trademark use in commerce.
  6. If a settlement is not reached but the parties have reached an agreement on any fact or other issue, the alj must issue an order confirming and approving, if necessary, those matters agreed upon. The order is binding on any Minnesota state district court judge who is later assigned to hear a related civil action.
  7. If no settlement is reached, any party may request the issuance of an alj summary. The alj may issue such a summary without the request of any party if the alj believes that the claim brought is a case of “trademark bullying.”
  8. Treble damages may be awarded against a party guilty of “trademark bullying”.
  9. If a party is found by a Minnesota state district court or the Office of Administrative Hearings to have engaged in “trademark bullying” more than two times in a period of ten years the party may have their right to conduct business in the state revoked.
  10. The cost of the settlement conference is split equally, unless the alj orders otherwise.
  11. The proposed effective date is August 1, 2012, and would apply to disputes evidenced by cease-and-desist letters and similar communications sent on or after that date.

I’m thinking this proposed legislative solution to “trademark bullying” really misses the mark, your thoughts?

—Jason Voiovich, jasonvoiovich@gmail.com
Follow Jason on Twitter: @jasonvoiovich

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You’d think Lance Armstrong would know something about the power of positive karma.  As the survivor or testicular cancer and brain cancer (I can think of no two worse kinds), winner of seven grueling Tour de France races, and vindicated from doping accusations, it seems counterintuitive that his foundation (aka Livestrong) would be ranked the #2 biggest trademark bully by Trademarkia (unless you’ve read Steve’s post on Trademarkia’s “methodology”).  The site reports his lawyers have racked up over $400,000 in legal fees trolling USPTO filings for (what seems to be) any mention at all of the words “live” and “strong”.  And God help you if you happen to be in the fitness, medical, or charitable market spaces.

Alex Heard at the Daily Beast tells the poignant story of Sara Rufener and her brand Live the Beauty of Being Strong. She’s obviously small time in the business world, and was a bit shocked to get a letter from Lance’s shock troopers.  Suffice to say, she didn’t appreciate being bullied, took her case to social media, and is trying to shame Livestrong into backing down.  We shall see.

For my take, she was a bit silly to plunk down $10,000 in merchandise before the matter was resolved, especially given the fact that a reasonable person could probably make the leap between Livestrong and her brand.  They can make the argument (and I would think rightly so) that she will get a boost from the implied association.  But I digress.  The details of what makes an infringement aren’t my area of expertise.

In fact, regardless of the outcome, she is likely now going to get much more of a boost than she would have otherwise.  Frankly, I think she isn’t taking full advantage of her situation – she’s fighting fire with fire.  And Lance has a bigger bonfire!  With a bit of a different approach, she can teach us an anti-trademark bully strategy using a bit of corporate judo. Let’s see how we redirect a bully’s considerable advantage shall we?

Step 1: Goading him in.  Recognize the bully for what he is immediately.  Trademarkia will help, but almost any organization could qualify.  At this point, you can choose to fight on the bully’s level or choose to use that energy to your advantage.  Redirection is the ultimate judo counterattack.  Let’s choose that.

Step 2: Patience, Grasshopper.  The nasty letter is bound to come.  You picked a fight with a bully, didn’t you? When it does, now is your chance to play the victim.  Start on social media, but don’t let it stop there.  Engage national media attention.  It’s unlikely the bully’s PR department is as diligent as its legal department.  You’ll have the upper hand for at least two news cycles.  By then, the narrative is set.

Step 3: Drag it out.  Let the outrage build a bit.  The legal process is slow, and you can use the time to publish all of those nastygrams you get from opposing counsel.  Remember, this is a David and Goliath narrative, you want it to seem hopeless.  If opposing counsel engages, all the better.  At this point, you want the attention that comes from a fight.

Step 4: Redirect.  At the peak of your publicity and energy, introduce your new brand at a safe legal distance.  You “fought the good fight” but you simply “can’t match the ‘bully’s’ resources”.  This gives your new brand an initial boost and embedded fan base you likely wouldn’t have had otherwise.

So, what am I really saying?  When you encounter a bully, it makes little sense to fight on his terms.  Instead, use the negative energy as fuel for your new brand.

As for Lance?  Time will tell.  What goes around indeed comes around.

There has been quite a flap surrounding the poster and invitation used by the University of Pennsylvania Law School to promote Penn Intellectual Property Group’s Fashion Law Symposium, scheduled for a week from tomorrow. The symposium appears to be designed as a serious affair, boasting an all-star cast of general counsel from the fashion industry, including those from Ralph Lauren, Forever 21, and Coach — to discuss in the first panel: “Trademark and the Fast Fashion Phenomenon.” The second panel is set to discuss “Copyright for Fashion Design: Evaluating the IDPPPA.” Last, copyright scholar David Nimmer is addressing “Copyright and the Fall Line” in his keynote address, and a number of big name law firms are symposium sponsors or donors, including Kenyon & Kenyon, Fox Rothschild, Covington & Burling, and Finnegan (or, maybe not Finnegan any longer).

Louis Vuitton — owner of the likely famous trade dress and individual marks depicted on the designer bag shown above — objected to the use of the poster shown below in this cease and desist letter, and LV now has been branded a serial “trademark bully” for it (and past objections against other alleged infringements). The Penn Law School Associate Dean for Communications apparently agreed to cease use, but then the accommodation was formally withdrawn by the University’s Associate General Counsel, in this response letter, defending the poster as a clever parody. As far as I can tell, the coverage of this flap is highly critical of Louis Vuitton for sending the demand letter in the first place, and entirely in favor of the University’s final decision to not cease use; for some examples of the coverage, see Techdirt, Above the Law, Law of FashionEric Goldman’s Technology & Marketing Law Blog, The Volokh Conspiracy, Johanna Blakely, and Alison Frankel’s ON THE CASE.

While I tend to agree the tone of the LV letter was excessive, and a few carefully-placed phone calls instead of a written demand, with greatly toned down the rhetoric, likely would have been more effective, what has left me a bit surprised by the coverage of this dispute is the absence of any scrutiny of the University’s response or position.

And while some have suggested that Louis Vuitton was schooled on the law by the University and its students, I really think a closer examination reveals there are at least a few loose strings on the University’s garment.

Yet, it seems no one is asking any questions probing the University’s claimed parody, and my concern about the popular “trademark bully” label and a social media shame-wagon approach to this issue is it sends the wrong message in that it greatly oversimplifies a very complex body of trademark parody case law — decisions that most counsel as quite unpredictable if they ever go the distance.

Like it or not, unlike the defense of federal dilution claims where certain conduct is excepted from liability, neither noncommercial use nor parody is excepted from or an affirmative defense to trademark infringement. Parody is really just another way of saying, there is no likelihood of confusion, which no one will know for sure, without credible survey evidence of the relevant public.

So, an overly harsh skeptic (not me, of course) might have paraphrased the University’s “parody defense” with a heavy dose of sarcasm: “Louis Vuitton, can’t you take a joke? Our work is an effective and obvious parody of you, to anyone who sees it (assuming they actually notice it) — not just those who are privy to the joke. Yeah, we’re all in on it. The symposium we are promoting in this poster actually is a laughing matter, never-mind the otherwise serious topics and tone or that it has been approved for continuing legal education credits, not comedic credits. It always was and remains our intent to poke fun at and ridicule you, and just you, in your absence, of course, with even some of your competitors present, by the way, but now that you have seen it and complained, if you’d like to come, please join us for the festivities, we’ll save a special seat for you, you might actually learn something!”

I’m admittedly not familiar with prior PIPG symposiums, but it might be interesting to see promotional posters of those events, to determine whether a common theme or reputation of poking fun at third parties is present — if so, perhaps it has become a common element like the satire and parodies a reader of Mad Magazine has come to expect. Or perhaps, such history might better explain this claimed parody, as with consumers of parody pet toy products who have been found to recognize the parody from the clearly different uses and inherent incongruity. But, for the University to simply call it a clever parody, merely begs the question of whether it is an effective one, or whether it is nevertheless likely to cause confusion not only to source, but as to sponsorship, affiliation, connection, or approval, as well.

Is it not at least plausible that the modified LV artwork was designed to simply attract attention and fill seats in the auditorium, and not to make fun of LV, and that LV’s design was so meticulously reproduced that some who see it won’t even notice the subtle changes? After all, trademark parody case law certainly supports the proposition that the more outlandish, outrageous, shocking and/or offensive the parody, the less likely confusion will result. We’ll probably never know, but it wouldn’t surprise me at all — if survey evidence were pursued on these facts — to find support for an actionable level of likelihood of confusion as to LV’s sponsorship, affiliation, connection, or approval of the fashion law symposium, especially since LV noted it has sponsored such events by other schools (Fordham Law School’s Fashion Law Institute). This, it seems to me, is a key alleged fact overlooked in the Associate Dean’s response. Moreover, the focus on comparing luxury goods to educational seminars seems to miss the mark, as there appears to be a direct overlap in the sponsorship of fashion law seminars.

Other possible loose strings to tug on might be the University’s apparent belief that “lawyers, law students, and fashion industry executives who will attend the symposium” would have to believe that LV “organized” the symposium, for there to be a problem, as opposed to simply having some other connection with it, such as through sponsorship, affiliation, or approval. I also wonder about the narrowly defined scope of the relevant public, as the symposium is open to the public, and presumably more will see the poster/invitation and be influenced by it than those who actually attend.

Back to the application of the “trademark bully” label on these facts, beyond the fact that parody is not a defense to trademark infringement, it is just another way of saying, there is no likelihood of confusion, it is worth noting that the trademark parody cases are “difficult to outline with any precision,” and “a review of the trademark parody cases gives us few bright line rules.” Indeed, some have said the trademark parody cases reflect a “barometer of both the presiding judge’s sense of humor and sense of fairness.” These cases are not black and white. Given that, and for the other reasons mentioned, the facts of this example don’t appear to me to be conducive to a label that assumes the trademark infringement claim to be frivolous or lacking any objective merit.

So, while it may be stylish to apply the shaming “trademark bully” label to Louis Vuitton, at the moment, I’m not convinced it fits, at least on these facts.

Where do you come down on this example?

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?

Eric Goldman over at the Technology & Marketing Law Blog has some harsh words for the recent Report to Congress on Trademark Litigation Tactics.

He calls the report “worthless”, a “complete whiff”, “useless”, and a waste of tax dollars.

In addition, David Pardue over at the Trade Secrets and IP Today blog calls it a “whitewash“.

Now I really can’t wait to read it.

In the meantime, if you’ve read it, what do you think about it?

And, what were you hoping it would say and/or accomplish?

In the wake of all the discussion and debate over “trademark bullying,” NFIB (National Federation of Independent Businesses), the self-proclaimed Voice of Small Business, recently offered its members and followers “5 Steps to Avoid Corporate Trademark Bullying“:

  1. Do Your Homework;
  2. Choose a Descriptive Business Name;
  3. Use Common Sense;
  4. Consider Buying Intellectual Property Insurance; and
  5. When in Doubt, Consult an Attorney.

I suppose it’s kind of hard to argue, in general, with doing your homework, using common sense, buying insurance, and when in doubt, consulting an attorney, but choosing a descriptive business name to avoid a trademark conflict? That’s taking it a bit too far, don’t you think?

Actually, when you drill down below each step, there is much more to say about each of them, and I’ll make sure to do so later, but for today, I’ll focus on what I call, “dreadful Step Number 2.”

As you know, we don’t like the D-word here, and as you will recall from a couple of years ago in my prior posts, “A Legal Perspective on the Pros and Cons of Name Styles,” and “Staying on the Right Side of the Line: Suggestive v. Descriptive,” we established the strong preference for suggestive as opposed to merely descriptive names and marks, and we addressed the all-important Spectrum of Distinctiveness for trademarks:

Nevertheless, NFIB, in support of mere descriptiveness, indicates:

If you’re deciding what to name your business, you’re more likely to prevent a trademark infringement lawsuit if you pick a general name that describes your business’ services—Plumbing Contractors Inc. or Accounting Services LLC, for example—instead of something more specific. While your business name may overlap with another’s, there is less chance for them to stake a claim on those terms. Just make sure that your business name still stands out.

Putting aside the unanswered question of how a small business may hope to “stand out” if it follows “dreadful Step Number 2,” let us not forget, Subway recently convinced the U.S. Trademark Office it has exclusive rights in the term “footlong” for submarine sandwiches, claiming that it has acquired distinctiveness in the “merely descriptive” term, and is asserting those claimed rights against Casey’s General Store, among others.

If a small business really wants to have a hope for avoiding any and all possible trademark conflicts, it needs to live in the generic category (Dan’s take, here), not the descriptive one (where there is the real potential for the acquisition of exclusive rights by others and where there are naturally more legal claims that actually surprise their targets), but who wants to be generic?

I can’t and don’t embrace the message of waving the white surrender flag, conceding any hope of naming creativity or any hope of clearing and adopting a truly distinctive name or mark. Even small businesses with limited budgets can and should do better.

If a small business uses common sense, does its homework, and consults a competent and experienced trademark attorney, there is no reason to limit itself or place false hope in pursuing “dreadful Step Number 2.”

If nothing else, I think we may have found another D-word.

Hat tip to Mark Prus who flagged this topic for me and even offered up a portion of the title, minus the question mark.

“Trademark law is a complex, specialized area of law,” according to the International Trademark Association (INTA), as set forth in a recent communication to the USPTO.

So, I must ask, does substantial experience or the lack of substantial experience in handling trademark matters impact the current trademark bullying debate? And, if so, how?

Here are some interesting numbers for thought, numbers that I teased out of the survey results that the Intellectual Property Law Section of the American Bar Association (ABA-IPL) recently provided to the USPTO (h/t to Eric Pelton of IPelton Blog) in response to the USPTO’s survey regarding “Aggressive Trademark Litigation Tactics” (formerly the “Trademark Bullying” Survey).

In response to Question 3 (“Approximately how much of your individual practice is dedicated to trademark litigation, prosecution, or counseling?”), over half of the respondents said they spend less than half their time on trademark matters, and over a third said they spend less than a quarter of their time on trademark matters. Apparently there were no questions asking respondents how long they have been practicing in the trademark law field.

Are these numbers part of the problem, to the extent there is a problem? What I do know is that having competent and experienced trademark counsel on the other side of a trademark dispute often can expedite bringing these complex matters to conclusion without the need for awkward, frustrating, and ill-timed education regarding the merits or lack of merits of a trademark claim.

So, was Dilbert’s previous dig against “trademark infringement lawyers” consistent with these numbers?

Last, what has me back on this topic is this: Yesterday was Strafford’s webinar on “Trademark Bullying: Emerging Legal Threat,” so if you attended this active discussion on “trademark bullying” and have feedback, one way or the other, please post it here.