You may be interested to know that the American Intellectual Property Law Association (AIPLA) did file a timely response on January 7, 2011, to the USPTO’s original request for comments regarding whether “trademark bullying” is a significant problem deserving attention, see here.

Hat tip to Jackie.

Let’s just say, it is starting to become clear why the USPTO dropped the phrase “trademark bullying” in favor of “aggressive litigation tactics” — as both IPO and AIPLA view the phrase as unfair and pejorative:

AIPLA believes that this definition unfairly characterizes trademark owners who assert their legitimate rights under the law and assumes ill intent without defining what might be considered “harassment” or “intimidation.” Reasonable minds can differ as to the proper scope which should be afforded to marks and whether a likelihood of confusion and/or a likelihood of dilution may exist.

While AIPLA does not condone abusive tactics, aggressive enforcement of a trademark does not automatically equate to abuse. Use of the pejorative terms “bullies” and “bullying” is misleading and unfair in light of trademark owners’ duty to police their marks and protect consumers from marketplace confusion, as discussed more fully below.

Here are some additional, money quotes:

AIPLA advises against regulation aimed at trademark abuse in favor of existing remedies. Trademark enforcement protects consumers, and overly aggressive litigation tactics are no more pervasive in trademark cases than other civil litigation.

After considering the issue, AIPLA has concluded that regulation, legislation, or other activity specifically aimed at abusive trademark enforcement efforts would be ill-advised. Most importantly, trademark owners are encouraged and expected to aggressively enforce their trademarks to further the public interest and protect consumers from marketplace deception and confusion. While AIPLA agrees that overly aggressive tactics which rise to the level of abuse or “bullying”—as we understand that term—should not be condoned, existing remedies are available to deter and address such behavior.

Further, enacting additional measures to combat trademark abuse runs the risk of contravening the fundamental purpose of the Lanham Act: consumer protection. Specifically, such measures would be: (a) contrary to the public interest in avoiding marketplace confusion; (b) inconsistent with long-standing principles of trademark law which encourage, and even require, trademark owners to aggressively police their marks; (c) incapable of consistent application; (d) addressing situations which have not been shown to be a significant problem; and (e) unnecessary in view of existing statutory provisions, civil procedure rules, and the inherent power of courts to protect against meritless claims.

We all continue to await the release of INTA’s comments to the public.

It appears the USPTO, once again, has extended the period for submitting comments on what originally was termed a study regarding “trademark bullying,” but was later characterized as a study on “aggressive trademark litigation tactics” — so, for those of you still interested in submitting comments, the new deadline is February 14, 2011.

Apparently, the USPTO plans on delivering the results of its study to Congress on March 17, 2011.

The current version of the survey omits (again) any reference to the politically-charged and pejorative term “trademark bully” — keeping the focus more broadly on “aggressive trademark litigation tactics.”

It is also my understanding that INTA did, in fact, submit timely comments to the USPTO survey, but I have not seen any reference yet on INTA’s website or newsletters about its submission.

For other DuetsBlog articles on the “trademark bullying” topic, see:

Any thoughts on why the USPTO keeps extending the deadline?

Did you submit a response to the survey?

Please share your insights and perspective one way or the other.

There’s been a lot of talk on DuetsBlog about trademark bullies. Some of this may apply, but I’m talking about the bullies that leave uncalled-for comments and “intrude” on your social space.

The consensus, more often than not, is that as a business, you must reply (in hopes that you can display your ability to deal with something like a flaw in your product). No response, in that case, makes your business look like it doesn’t care about your customers—it works against you.

There are some great articles on how to respond to criticism. I’m sure we could talk all day about the best practices of responding to criticism, but that’s not what I’d like to focus on. There’s talk about how to respond, but I’d like to cover when it’s appropriate not to respond.

There are still some companies that are not on social media platforms because of the fear that someone might say something that is not appealing to the business brand. Regardless, consumers—through all types of media—are voicing their opinions about products and services. Not all of it is nice, warranted or wanted. And some of it, quite frankly, is unnecessary.

As a business owner or an employee of a business, we tend to be a bit more sensitive about the products or content we produce, so when someone posts something negative about it, we tend to panic (not always literally). It’s hard to see what is the “correct” path (there is no “right,” just a “subjective-right”)—to respond or not to respond.

Some commenters have a history of being, well, jerks. They never have anything positive to say, and instead of being proactive about their concerns, they wait for a particular post to spark their stream of hatred. So, before you panic—whether that means you physically get upset, prepare a scathing response, or let it get to you—do enough research to make yourself comfortable with your decision to respond.

Below are some things to consider.

What is the question behind the question?

It may not be a question, exactly, but the concept is the same: what is he/she really saying? What do they want? Dig deeper and find the motivation. (Thanks to Jeff Williford of the Disney Institute for this concept. Jeff was a keynote at LMA National Conference in Orlando.)

What does their content tell you?

Look at their social platforms. Do they have a history of negative comments? Is the comment too poorly written to take it seriously, asks Greta Kowalkowski. Jim Ducharme on the Social Marketing Forum suggests:

Check their recent tweets on their Twitter page and get a sense of their mindset and attitude. You may even find there is an agenda behind the tweets and that might influence whether you respond, if at all – this is a judgment call.

My friends Nancy Myrland at Myrland Marketing and Tom Matte of Max Advertising agree that you, first-hand, must observe this behavior. Just thinking this particular comment is mean-spirited isn’t enough to just ignore.

Another word for those types of commenters: “trolls” (and not of the bejeweled belly kind—see Wikipedia entry on it). Again, do your homework before deciding if the person is being a bully or is just voicing their concerns.

Do you actually have content to respond?

This tip comes from my college professor, Dean Beckman, who said:

It always depends on the situation of course, but I would say in general don’t respond if you don’t have any factual or even anecdotal evidence to refute the comment.

Including just fluff in a response might be detrimental. There’s always “thanks for the comment,” as Nancy Myrland says.

Don’t fight negativity with more negativity

(This is more of a rule than a suggestion.) Lisa Barone over at Outspoken Media puts it like this:

Let’s face it, social skills and a beating heart aren’t necessarily two characteristics common to most organizations. Giving them a microphone to address the people vocally speaking out against them, well, let’s just say this could go horribly wrong.

It’s not a recent post, but it’s still applicable. Take a breath, don’t respond instantly. Your business isn’t going to go south in under an hour—it’s OK not to respond right away.

If you respond, what will your commenter respond back?

Will engaging them in a heated conversation help either of you? Sometimes, giving them attention is their goal, and no matter how genuine you are about your response, they’re going to come back at you with more. Many times, ignoring the bully will make them go away.

Seth Godin touches this on his post from Tuesday:

A bully acts up in a meeting or in an online forum. He gets called on it and chastised for his behavior.

The bully then calls out the person who cited their behavior in the first place. He twists their words, casts blame and becomes an aggrieved victim.

Often, members of the tribe then respond by backing off, by making amends, by giving the bully another chance.

And soon the cycle continues.

Brands do this, bosses do it and so do passers-by. Being a bully is a choice, and falling for this cycle, permitting it to continue, is a mistake.

Before you become too hard on yourself, remember that you can’t please everybody.

Your turn. What are your suggestions? Do you have a bully story to share (no names, please!)? Let us know in the comments.

A belated thanks to Candice Kim and Professor Leah Chan Grinvald for sharing their insights and perspectives in our recent webinar on trademark bullying.

One topic we discussed is Backcountry.com’s recent back-down to backlash over its trademark enforcement activities concerning the Backcountry mark.

The example is a harsh reminder to trademark counsel of the worst case scenario when a trademark enforcement campaign comes under fierce public attack.

In response to the boycott and backlash, Backcountry.com not only issued a public apology, it admitted to fumbling how it pursued trademark claims, it admitted to making a mistake and to misjudging the impact of its actions.

Backcountry.com even made a public promise to make amends with those adversely impacted by its actions, and it has taken steps to rebuild public trust.

Last but not least, especially for all the trademark types in the crowd, news reports in November were that Backcountry.com had fired its trademark counsel.

Last week Backcountry.com revoked the power of attorney for its prior trademark counsel and appointed new USPTO counsel, doing the same at the TTAB too.

Not knowing the facts of how or where things may have gone wrong with prior counsel, it will be interesting to see what enforcement will occur going forward.

Back to the webinar, we also focused attention on strategies and tactics brand owners can employ to develop intelligent trademark enforcement campaigns.

One slide that webinar attendees really liked from our backpack is this one:

It visually illustrates how a brand owner might consider analyzing watch reports.

Obviously a precursor to its development would be a trademark strength analysis.

Keep in mind, this particular graphic is only an illustration; the perfectly spaced concentric circles should not be interpreted as trademark lines, as we know trademark lines are more subjective than measurable real estate property lines.

The final graphic for a brand would reflect not only an intelligent and defensible trademark enforcement strategy, but attempts to balance any PR concerns too.

Last week I had the fortune of spending the week at the Shot Show in Las Vegas, capturing this brand collage of exhibitors for an event at a restaurant in my hotel:

Interestingly, Kryptek has a Battlefield to Backcountry registration due for USPTO maintenance in days, and surprisingly, it was never opposed by Backcountry.com.

With all binoculars on Backcountry.com’s promise that “[w]e only want what’s best for the whole community and we want every person and business in it to thrive” time will tell what tools may remain in new trademark counsel’s backpack.

Seth Godin

It’s not good marketing and I’m pretty sure it’s not good law, either.

It seems as though Entrepreneur magazine (who should know better) is working with Latham and Watkins (who should certainly know better) to persist in their relentless efforts to bully entrepreneurs to stop using the word ‘entrepreneur’.

And yes, it’s a word.

Not a fanciful or inherently distinctive trademark, a word. Almost 800,000,000 matches in Google.

One of the only words available to describe a person who builds an enterprise bigger than herself, often using outside resources.

Without that word, it’s hard to describe the work.

Poignantly, it’s interesting to see that they’re not going after people with a ton of resources. If Brian Koppelman, David Levien and Showtime started going after billionaires for using the word ‘Billions’, I’d call it a fair fight. A dumb fight, but a fair one.

But deep in the bowels of the Latham offices in San Diego (which, fortunately, hasn’t been sued by the producers of Anchorman for trademark infringement) there are young lawyers, early in their career, sending nasty letters to entrepreneurs (there’s that word again) like Jen Lehner. You can see her work here: jenlehner.com/blog

Apparently, the powers that be decided that her podcast called “Front Row Entrepreneur” somehow infringed on a magazine that hit its peak in 2013. How?

“Front Row” modifies the noun. The trademark is the modifier, not the noun. Front Row™ is a trademark. Entrepreneur is simply a word.

With great cost and hassle, fledgling entrepreneurs (there’s that word again) who have finally gotten their business off the ground now have to dig in to either fight a huge law firm and their misguided but well-funded lawyers–or spend the money to change what they already built.

Who, exactly, does this help?

By engaging in this behavior, Entrepreneur might think it is building a strong trademark; instead, it is throwing away the very purpose of any trademark: To be a symbol of goodwill within a community. Amongst entrepreneurs, it is simply becoming a hated one.

Better, I think, to spend the time and the money building something that entrepreneurs actually like and respect.

From time to time, I post squirrelly thoughts. Today, I wonder: Should a large company with famous, distinct trademarks sometimes hold back from aggressively enforcing those trademarks, even when doing so might at first appear to be a useful competitive strategy? I’m sure many executives at McDonald’s–the worldwide fast-food chain that it is so ubiquitous The Economist uses the prices of the Big Mac to measure purchasing power parity throughout the world–are questioning some past enforcement decisions.

If you haven’t heard, the European Union Intellectual Property Office (EUIPO) issued a decision cancelling McDonald’s “Big Mac” trademark registration within the European Union. Although the decision was based on certain procedural and evidentiary issues, it resulted from a proceeding brought by McDonald’s European competitor “Supermac’s,” an Irish fast-food burger chain opened in 1978, in response to McDonald’s aggressive enforcement tactics.

Supermac’s offers a similar cornucopia of comfort food items, including chicken nuggets, french fries, and the “Mighty Mac,” which is:

A succulent double burger complete with two 100% Irish beef patties, melted cheese, crispy lettuce, diced onion with ketchup and burger sauce served in a toasted sesame seed bun.

Sound familiar? Here’s how McDonald’s describes the Big Mac:

Mouthwatering perfection starts with two 100% pure beef patties and Big Mac sauce sandwiched between a sesame seed bun. It’s topped off with pickles, crisp lettuce, onions and American cheese for a 100% beef burger with a taste like no other. It contains no artificial flavors, preservatives or added colors from artificial sources. Our pickle contains an artificial preservative, so skip it if you like.

Perhaps for these reasons, McDonald’s vigorously opposed Supermac’s trademark registrations a few years ago, arguing that the similarity between the names “McDonald’s” and “Supermac’s” (the Mc/Mac usage) would cause confusion among consumers.

Which one is the Big Mac, and which is the Mighty Mac? (hint: in order)

In 2017, Supermac’s retaliated against McDonald’s enforcement activities, seeking cancellation of McDonald’s own flagship marks. Central to Supermac’s narrative is McDonald’s “trademark bullying”–a topic we’ve discussed generally on DuetsBlog numerous times. Specifically, Supermac’s argued that McDonald’s purposefully engaged in anticompetitive conduct, including “registering brand names . . . which are simply stored away in a war chest to use against future competitors.”

It is not readily apparent that EUIPO ruled against McDonald’s on grounds related to bullying or overly-aggressive enforcement because, ostensibly, the ruling is based on McDonald’s failure to prove genuine use of “Big Mac” as a burger or restaurant name–which seems hard to believe given, among other things, The Economist’s Big Mac Index. However, Supermac’s is calling this a victory for small businesses, and a win in “a David versus Goliath battle against trademark bullying by a powerful multinational.” As a result of EUIPO’s ruling, companies may now freely use “Big Mac” throughout the entire EU. McDonald’s has said it intends to appeal the ruling.

EUIPO’s ruling seems absurd, but it makes me wonder if McDonald’s could have avoided this ruling, and the trademark bully label, by taking a less aggressive stance in enforcing its trademarks. Instead of seeking to prevent registration of the Supermac’s and other marks in a transparently-competitive posture, McDonald’s could have decided to target its enforcement on certain products and names (e.g., Mighty Mac), or simply compete on the basis of quality and price. McDonald’s could have also considered creative ways to discourage Supermac’s from using similar marks, employing humorous methods akin to Bud Light sending a medieval jester to deliver a cease and desist message on a scroll to Modist Brewing. Increasingly, brands need to seek a balance between uncovering and prosecuting all possible misuses and not enforcing rights at all. This latest EUIPO may, at its heart, be a lesson in more selective enforcement.

Update: This article was referenced, and Kyle was quoted, by the Washington Post on February 11, 2019.

Before we think predictions for 2019, let’s consider the vast ground we’ve covered in 2018:

Wow, I’m exhausted, and these highlights are only a small fraction of what we delivered in 2018.

You may recall, earlier this year, I predicted more informational and failure to function decisions.

As our friend John Welch reported, there were more than a few (here, here, here, here, and here).

Stay tuned, on March 13, in New York City, I’ll be diving deeply into the failure to function topic, among others, at Practicing Law Institute’s Advanced Trademark Law 2019: Current Issues.

In terms of my big trademark prediction for 2019, it will be revealed whether the scandalous bar to federal registration is invalidated, whether or not the Supreme Court agrees to hear Brunetti.

So, what is your big trademark prediction for 2019?

Over the weekend, the Star Tribune continued the growing drum beat of understandable excitement for Super Bowl LII, as it steadily approaches U.S. Bank Stadium in Minneapolis.

The article also plays the typical NFL-enabling drum beat of caution against local businesses that might see fit to fairly and truthfully reference the Super Bowl in some commercial manner:

“From the NFL’s viewpoint, if businesses use the terms or other trademarks, it could appear like it is an official part of the Super Bowl or its related events, said Dolores DiBella, one of the lead intellectual property attorneys for the NFL.”

Perhaps the NFL would like to live in a world where no business can use the words “Super Bowl” without paying a fee; that isn’t the world we live in, especially given the growing judicial drum beat and emphasis on Free Speech and the First Amendment in the trademark/copyright worlds.

Nowhere in the article is there any acknowledgement that the NFL has long been accused of behaving as a trademark bully and overreaching with its valuable intellectual property rights.

The legal test for trademark infringement (likelihood of confusion) is not shown when a use “could appear like it is an official part of the Super Bowl or its related events,” the mere possibility is simply not enough, the likelihood of confusion must be probable.

Nowhere in the article is there any mention of trademark fair use; classic or nominative fair use. Nowhere is there any mention of Free Speech or the First Amendment. Even, this kind.

And, for those wondering whether the Super Bowl trademark might be famous and deserving of dilution protection, let’s not forget, the future of trademark dilution law is in question.

So, while it is true that not uttering the words “Super Bowl” will help a business play it safe and avoid all the fire and fury of the NFL, for those who are properly advised and have insurance coverage for advertising injury, that would be a very big game worth watching (or playing) too.

Trademark bullying allegations are in the news again.

Not only is Forever 21 calling Adidas a trademark bully for asserting rights in the three stripe design mark, it is asking a federal court to say it has not done anything wrong and award it fees:

“Tired of operating with a cloud over its head with regard to its right to design and sell clothing items bearing ornamental/decorative stripes, and unwilling to stop doing something it has every right to do and pay a bully to leave it alone, Forever 21 has decided that enough is enough. Forever 21 is not infringing any Adidas trademark and has not breached any agreements with Adidas. This matter is ripe for a declaratory judgment.”

This is not their first rodeo together, see here and here. It isn’t our first rodeo discussing Adidas either, see here, here, here, and here.

For more on the subject of trademark bullying, please consider attending another Strafford live webinar a week from today, March 14 at noon CST, details here.

First three who comment earn a free ticket to attend, we hope you join us.

UPDATE: Looks like there is going to be a fight about where the trademark fight actually goes forward, as KOIN6 reports, here.