The New York Times has been following a trademark battle between Christy Prunier’s body and beauty care start-up business apparently geared toward preteen and teenage girls (Willagirl LLC) and industry giant Procter & Gamble, owner of the well-known, if not famous, more than century old WELLA hair care brand, with U.S. trademark rights dating back
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.…
One good thing leads to another, or perhaps, vice versa (then again, maybe not):
Odds are, you probably are familiar with the logo on the left, but maybe not the history behind the brand and company it represents. Apparently, a guy named Jimmy John Liataud founded Jimmy John’s Gourmet Sandwiches in Charleston, Illinois, in 1983, and since then, has grown his successful franchised restaurant business to more than 1,000 locations in 38 states, including many in Minnesota.
And, I’m guessing most of you haven’t encountered the logo on the right, so, hat tip to Ed, who guessed right that it would capture my interest. Apparently, a second generation family business called Jimmy’s Johnnys was founded in the northern suburbs of St. Paul, Minnesota, four years before Jimmy John’s came into existence, all the way back in 1979.
Branding conflict? Trademark problem? Antitrust problem via brand extension and vertical integration (for tongue-in-cheek reasons that will become more apparent far, far below)?
Need more information?
What if Jimmy’s Johnnys isn’t selling sandwiches at all, but assuming its position in the food chain, by helping dispose of them, through this business (answer below the jump):…