Trademark Bullying

Seems as though any trademark owner who sends a cease and desist letter is bound to be called a trademark bully by someone. In fact, the USPTO has extended the period for comments by a month with a new deadline of February 7, 2011.

If you had started selling shirts, pants, and  under the trademark and brand KAKATOO, and you received a cease and desist letter from someone selling shoes under the trademark and brand DELICIOUS, would you not be crying foul and/or applying the ever-popular label “trademark bully”?

Obviously, I don’t believe the USPTO is a trademark bully, but asking the question, and discussing some recent likelihood of confusion refusals issued by Examining Attorneys at the USPTO, I believe, helps put in perspective the recent flurry of discussion and concern of trademark bullying. It also reinforces the power of federal trademark registrations.

This is how the Examining Attorney at the USPTO initially refused registration of KAKATOO for clothing, based on a prior registration for DELICIOUS for shoes:

Applicant’s mark KAKATOO is confusingly similar to the registered mark DELICIOUS because KAKATOO is the foreign equivalent of “delicious.”

Under the doctrine of foreign equivalents, a mark in a foreign language and a mark that is its English equivalent may be held to be confusingly similar. TMEP §1207.01(b)(vi); see, e.g., In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006); In re Hub Distrib., Inc., 218 USPQ 284 (TTAB 1983). Therefore, marks comprised of foreign words are translated into English to determine similarity in meaning and connotation with English word marks. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772,396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Equivalence in meaning and connotation can be sufficient to find such marks confusingly similar. See In re Thomas, 79 USPQ2d at 1025.

The support for this refusal is below the jump.Continue Reading Foreign Equivalents?

There are many things that serious trademark owners do throughout the lifecycle of a trademark to mitigate risk, protect the valuable goodwill in their underlying brand, and preserve their valuable investment in this important intellectual property asset. Here is a fairly extensive, but certainly not exhaustive, and often forgotten, list of those things:

  1. Clear new

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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…

What is the difference between a semiconductor computer chip maker and an electrician?

Not much, at least when both have the word “intel” in their business names, according to a Complaint (complete with Exhibits) filed last Thursday in Minnesota federal district court, by Intel Corporation a/k/a Chipzilla, against a pair of …

Actually, not just the Seventh Circuit Court of Appeals (governing appeals from the federal district courts in Illinois, Indiana, and Wisconsin), but the Seventh Circuit is the most recent to reaffirm that our current legal system does, in fact, provide protection against real “trademark bullies” — and more generally — those who abuse…

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