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?

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.

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.

One of the problems with “trademark bullying” can be a failure to comprehend the legal standard governing most trademark disputes: Likelihood of confusion.

Another is a failure to appreciate the subjective nature of whether the legal line has been crossed or whether there has been an attempted trademark overreach.

Understanding that trademark rights are dynamic (not static, meaning they can grow or shrink over time) and that this type of intellectual property is not amenable to precise demarcation like a real estate property line, is key.

Likelihood of confusion is a fact-intensive determination that seeks to weigh multiple factors beyond actual confusion or an emotionally-charged intent factor.

That said, when I’m helping a client respond to overreach, besides sticking to the facts and avoiding an emotional response, I’ve found Rorschach can help too:

The Rorschach inkblot test recognizes that different people can see different things when looking at the very same thing, sometimes wildly different things.

Likelihood of confusion is a surrogate to predict consumer perceptions, so when a demand exhibits an unhealthy preoccupation of the brand owner’s mind, say so.

One trademark demander quietly went away after receiving this partial response:

“Setting aside how a relevant customer would view the design, the design looks no more like the letter N (with an extraneous line) than it does the letter X within parallel lines, or a plus sign within parallel lines, or a stylized number 8, or a stylized lemniscate, or a tilted hour glass, or a spindle, or a bowtie, or a stylized 4b, or any number of other equally strained possibilities. With a good imagination, one can pick out a lot of things when confronted with a design element, but a Rorschach exercise isn’t the test for trademark infringement or confusing similarity.”

Join us next week for a vibrant discussion about how to avoid the “trademark bullying” label, when designing a coherent trademark enforcement strategy.

One example we’ll analyze is the Backcountry.com back-down to backlash.

Another is the example Seth Godin wrote about on DuetsBlog in April 2019.

I’m thankful for the opportunity to discuss this important trademark topic with one of my talented partners at GT, Candice Kim, and we’re also joined by the learned Leah Chan Grinvald, Professor of Law, at Suffolk University in Boston, who authored Shaming Trademark Bullies.

The Strafford webinar takes place at noon CST, Thursday January 16.

Here is a link on how to sign up, or let me know if you’d like a complementary pass, we still have a few to share with some of our loyal readers.

It’s been a while . . . about seven months now.

As you’ll see, a few things have happened since April, when we last left you with these gems on the topic of trademark bullying: Stop Bullying the Entrepreneurs, What does Entrepreneur Mean, Anyway?, and Public Shaming is Not the Solution to Trademark Bullying. Let’s Build One

We’re thankful to be back here, to resume the legal and marketing team dance.

So, in the spirit of counting our abundant blessings, especially this week, I’d like to share with you how continuously thankful I am for:

Tiffany, Draeke, Tucker and I, with the help of others, will no doubt have some fun, thought-provoking posts for you as we look ahead to 2020, and we are so thankful to be doing so as part of the GT platform, just named U.S. News and World Report’s only Law Firm of the Year in Trademark Law for 2020.

Thank you, Susan Heller and Joel Feldman, for your incredible leadership of GT’s Trademark and Brand Management Group.

Dear readers, I am truly, continuously thankful for the ability and opportunity to stay engaged with you.

What or who are you thankful for?