Apparently has led to the creation of a new blog entitled Trademark Bully — Kindly Back Off!

The TrademarkBully.com domain was registered just days ago, by someone who has shielded their identity (doesn’t real blogging require transparency?) and it resolves to a WordPress Blog, with a couple of initial posts from yesterday.

It also reveals the blog’s intended purpose this way:

We represent people who are dedicated to bring exposure to trademark bullying and to help victims who feel helpless in the face of a bullying attempt.  If you believe someone is trying to use trademark law and litigation tactics unfairly in order to put an end to your business, share your story here.  We believe there is a difference between  separate  review your case, and if we find that you are a victim of a trademark bully, we will publicize your case on this site.  In the meantime, please visit our Bully Victim Help Center, where you will find various resources to help you stave off this bullying attempt.

Victims:  As of now, one of the few effective ways to fight trademark bullying is to bring public attention to this practice.  By submitting your case you will be informing consumers and the public of cases where trademark owners attempt to enforce their trademark rights beyond a reasonable interpretation of the scope of the rights granted to them.

Consumers:  Trademark bullying affects us all, not only those who are bullied directly.  Bullies stifle competition, thereby artificially raising prices on their products, and putting a strangle hold on our ability to innovate and introduce exciting new products into the market place.

Since there is not much content yet on the page entitled Bully Victim Help Center, looks like your best bet is still to attend the highly anticipated live webinar tomorrow at 1:15 PM CST: “Strategies for Dealing With Trademark Bullies.”

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.

Who says that being a large corporate trademark owner is one of the prerequisites to earning the emotionally-charged, pejorative, and ill-defined label “trademark bully“?

Well, the original directive to the USPTO appears to assume that “trademark bullying” is a one-way street, disfavoring only large corporate trademark owners, and ignoring the possibility that individuals and small businesses are equally capable of deserving scrutiny for their abuses of the trademark system, by originally focusing on “the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.”

Interestingly and easily overlooked, IPO noted in its January 7, 2011 submission:

[O]n December 9, 2010, the Copyright Cleanup, Clarification, and Corrections Act of 2010 was signed into law, becoming Public Law No: 111-295. It contained a provision removing the “by corporations” language from the Trademark Technical and Conforming Amendments Act of 2010, such that the law now requires the USPTO to examine “(1) the extent to which small businesses may be harmed by litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner. . . .”

Indeed, for some reason, even the USPTO’s most recent restatement of the directive, here, fails to note what IPO indicated Congress has deleted from the directive.

In addition, IPO also commented that large size isn’t necessarily a good predictor of bad behavior:

“In addition, the pejorative and emotionally charged term “bullies” suggests that the trademark owner in question is a large organization that is using its greater size and economic power to unjustly “push around” a smaller organization or individual. In the experience of IPO members, this is rare, and most large organizations take action in cases upon careful reflection of the facts and development of a strong business case analysis and justification for the litigation expense.

Indeed, several IPO members noted a trend towards more aggressive assertion and defense of trademark claims by individuals and small organizations, particularly where they represent themselves or have obtained legal representation on a contingency basis.”

This all leaves me wondering whether IPO had in mind, at least as one example of this apparent role-reversal, a recent trademark dispute between 3M (an IPO member) and a pro se individual defendant named Pradeep Mohan, wherein Mr. Mohan was found liable for willful trademark infringement of 3M’s well-known Littmann stethescope brand and mark, operating an “unethical” Internet business out of his Santa Cruz residence.

Susan Feyder of the Star Tribune reported on 3M’s win back in December, and the decision is here.

A couple of weeks ago the U.S. District Court for the District of Minnesota (The Honorable Ann D. Montgomery) ordered Mohan to pay and granted to 3M $838,000.00 as reasonable attorneys fees under the exceptional case provision of the Lanham Act, reducing 3M’s original request of $942,063.48 by $104,063.48. A pdf of Judge Montgomery’s January 19, 2011Order is here.

Any bets on whether 3M actually banks any of this award?

And, what do you think about size, does it matter? In other words, are small businesses and individuals also capable of earning the “trademark bully” label, what ever that may mean?

Last October, as you may recall, I wrote this in a post entitled “The Mark of a Real Trademark Bully“:

[T]he U.S. Patent and Trademark Office (USPTO) is currently seeking information about various litigation tactics, including whether “you think trademark “bullies” are currently a problem for trademark owners, and if so, how significant is the problem?” If you have an opinion on these questions, please share your views below, and the USPTO would like to hear from you here.

The initial deadline for comments to the USPTO was January 7, 2011, and for those of you who missed the opportunity, the deadline has been extended a month to February 7, 2011. By the way, anyone know the reason for the extension?

Perhaps even more interesting than the unknown (to me) reason for the month extension is that the words “trademark bully”, “trademark bullies” and “trademark bullying” have been scrubbed from and they no longer appear in any of the twelve questions posed by the USPTO operating under the new February 7 deadline.

Question six initially read (with a footnoted definition):

6. Do you think trademark “bullies”[1] are currently a problem for trademark owners, and if so, how significant is the problem?

[1] A trademark “bully” could be described as a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.

It now reads (without a footnote):

6. Do you think trademark owners currently encounter the problem of other trademark owners using their trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow?  If so, how significant is the problem?

Question eight initially read:

8. Do you think the USPTO has a responsibility to do something to discourage or prevent trademark bullying? If yes, what should the USPTO do?

It now reads:

8. Do you think the USPTO has a responsibility to do something to discourage or prevent aggressive trademark litigation tactics?   If yes, what should the USPTO do?

Question nine initially read:

9. Do you think the U.S. courts have a responsibility to do something to discourage trademark bullies?  If yes, what should the U.S. courts do?

It now reads:

9. Do you think the U.S. courts have a responsibility to do something to discourage or prevent aggressive trademark litigation tactics?  If yes, what should the U.S. courts do?

Question eleven initially read:

11. Do you think Congress has a responsibility to do something to discourage or prevent trademark bullying?  If yes, what should Congress do?

It now reads:

11. Do you think Congress has a responsibility to do something to discourage or prevent aggressive trademark litigation tactics?   If yes, what should Congress do?

So, “trademark bullying” now = “aggressive trademark litigation tactics”? I think not.

Nevertheless, it certainly is a curious approach to rebranding (or repositioning) the “trademark bullying” topic.

Anyone know the reason or motivation behind why the words “trademark bully”, “trademark bullies” and “trademark bullying” have disappeared from the USPTO survey?

The Intellectual Property Owners Association (IPO) submitted its comments last Friday in response to the USPTO’s recent invitation for input on whether “trademark bullying” is a problem.

In response to the USPTO’s key question “Do you think trademark ‘bullies’ are currently a problem for trademark owners, and if so, how significant is the problem?” IPO answered:

IPO does not believe that trademark “bullies” are a problem for trademark owners. The question defines a trademark “bully” as a “trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.” This language is problematic because, inter alia, what seems reasonable to one person may not seem reasonable to another. In point of fact, trademarks serve as signs of quality of a particular good or service and play an important role in consumer protection by preventing confusion in the marketplace and building consumer trust. With this deep and expansive market reach, comes the responsibility of maintaining the integrity of the brand. It is in the best interest of companies, large and small, to carefully review potential trademark infringement issues and create a consistent enforcement strategy which, in turn, bolsters brand recognition and reliance.

To this end, trademark owners are permitted to have the courts determine the limits of their rights. It is sometimes difficult to predict when a trademark claim will prevail, particularly in cases where famous marks are used on non-competitive goods and services. The fact that a trademark owner does not ultimately prevail does not mean that the enforcement of its rights was inappropriate.

In addition, the pejorative and emotionally charged term “bullies” suggests that the trademark owner in question is a large organization that is using its greater size and economic power to unjustly “push around” a smaller organization or individual. In the experience of IPO members, this is rare, and most large organizations take action in cases upon careful reflection of the facts and development of a strong business case analysis and justification for the litigation expense.

Indeed, several IPO members noted a trend towards more aggressive assertion and defense of trademark claims by individuals and small organizations, particularly where they represent themselves or have obtained legal representation on a contingency basis. The USPTO has been helpful in certain instances. In a July 14, 2006 Order signed by Chief Judge J. David Sams, the Trademark Trial and Appeal Board (TTAB) sanctioned an individual for his “misuse of the TTAB’s procedures” by filing more than 1,800 requests for extensions of time to oppose the registration of trademark applications within a seven-month period. Large organizations are often the targets of this type of behavior, as they are perceived as having “deep pockets” and the willingness to pay a “nuisance value” to avoid the cost of litigation, despite the lack of merits of a case. Such behavior thwarts the consumer protection mechanisms fundamental to trademark law. These types of cases do not fit the “bullies” label.

Finally, to the extent that “bullying” behavior is grounded in litigation tactics independent of the merits of cases, IPO notes that in trademark case law, one can find examples of both plaintiffs and defendants engaging in objectionable behavior. An infringing defendant determined to delay a finding of liability has as many options available to it as does a plaintiff attempting to vindicate its rights; trademark plaintiffs are themselves at risk of being bullied by more obstructionist opponents.

For those of you unfamiliar with IPO, it describes itself like this:

IPO, established in 1972, is a trade association for companies, inventors, law firms and others who own or are interested in patents, trademarks, copyrights and trade secrets, and the like. IPO is the only association in the United States (U.S.) that serves all intellectual property owners in all industries and in all fields of technology. Governed by a 50-member corporate board of directors, IPO advocates effective and affordable intellectual property (IP) ownership rights in the U.S. and abroad on behalf of its more than 200 corporate members and more than 11,000 individuals involved in the association.

Board members include 50 representatives from significant trademark owners and companies like Google, Microsoft, 3M, IBM, Apple, Intel, Motorola, among many others.

A number of the points IPO raised in its response are consistent with previous points I have made in a DuetsBlog post entitled “The Mark of a Real Trademark Bully.”

I’m thankful that IPO was heard on this issue, especially given the fact that IPO has a much broader intellectual property (IP) focus going well beyond trademarks, but what about INTA, whose sole focus is the trademark part of what is protected under the umbrella we call IP? Hello? The International Trademark Association? I have yet to see any position taken by INTA on this subject, and we are members.

So, I’m left wondering, was INTA too busy announcing its new website (a day before the USPTO’s deadline), introducing the controversial “My Powerful Network,” considering related accusations of censorship, and choosing to drop the popular TM Topics email discussion group, making it unable to weigh in on this invitation from the U.S. Trademark Office? Or, perhaps, was INTA unable to reach the necessary political consensus to convey a unified position on the subject to the USPTO?

I seriously hope not and that an announcement regarding the position INTA took (assuming it did submit a response) on the subject is forthcoming.

What do you think of IPO’s response to the USPTO? Should INTA have submitted a response?

Seems as though there is a lot of discussion and news reports these days about bullying and how to put a stop to it: School bullying, workplace bullying, and cyber-bullying, to name a few of the most common types. Fair enough, as I recall, my seventh grade PE teacher was a real bully.

However, for those of you who haven’t heard yet, there also is growing interest in examining a brand new type of bully, and they are calling this creature the "trademark bully".

That’s right, the U.S. Patent and Trademark Office (USPTO) is currently seeking information about various litigation tactics, including whether "you think trademark “bullies” are currently a problem for trademark owners, and if so, how significant is the problem?" If you have an opinion on these questions, please share your views below, and the USPTO would like to hear from you here.

So, what is a "trademark bully" you ask? The USPTO’s survey provides this definition: "A trademark ‘bully’ could be described as a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow."

The USPTO’s "trademark bullying" inquiry apparently stems from some language in the Trademark and Technical Conforming Amendment of 2010, directing the Secretary of Commerce to "study and report" to Congress on “The extent to which small businesses may be harmed by litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.”

Beyond a "reasonable" interpretation of the scope of rights granted to the trademark owner? Of course, the plaintiff and defendant will never agree on what might be considered a "reasonable" interpretation of the scope of plaintiff’s trademark rights, even in the most routine trademark cases, so whose perspective decides what is reasonable for the purpose of applying the trademark bully label, and what are the consequences, if guilty? Moreover, who decides what "might be" reasonable under the circumstances, since those additional qualifying terms appear in the USPTO query?

In addition, 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

So, even with all that, we’re still to decide how to apply the trademark bullying label based on mere reasonableness? Sorry, but that seems, well, unreasonable to me.

Continue Reading The Mark of a Real Trademark Bully

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.