Brand Bully Backlash

Posted by | December 16, 2010 | General | 3 Comments


On March 17, 2010 the Trademark Technical and Conforming Amendment Act of 2010 became effective.  The Act requires the Secretary of Commerce and the Intellectual Property Enforcement Coordinator to conduct a study and report to Senate and House Judiciary Committees on the effect that trademark bullying has on small businesses.

Trademark bullying happens when a brand owner overreaches in the assertion of its rights.  This often involves a demand that the accused business owner change marks, even though the goods and services, consumers, and channels of trade are nothing alike.  I’ve seen it happen more than once . . .

A vodka maker threatened to sue a graphic designer for using the same name.

A fast food joint threatened to sue a car wash for using the same name.

A software manufacturer threatened to sue a gaming company for use of a mark that had one word in common with the software marker’s mark.

In all cases the smaller company capitulated rather than exhaust its resources fighting frivolous litigation.

As part of the study, the USPTO seeks feedback from TM owners, legal practitioners, and others regarding their experiences with brand owners who attempt to enforce their trademark rights beyond a reasonable interpretation of the scope of those rights.

The PTO wants to know:

(1) Instances in which you have first-hand knowledge where a small business may have been the target of litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner;

(2) When C&D letters were used as part of the bullying tactics;

(3) When the bullying tactics involved state or federal court litigation or TTAB Proceedings;

(4) Whether bullies are a problem for TM owners, and if so, how great of one;

(5) Whether bullying tactics are more prevalent in trademark law than other areas of law;

(6) Whether the PTO or the courts have an obligation to take action to discourage or help prevent bullying, and if so, what;

(7) What other agencies might help prevent bullying;

(8) Whether Congress should do something about trademark bullying and if so, what; and

(9) Any other comments you may have about bullying.

All comments should be submitted to by January 7, 2011 with “Small Business Study” in the subject line.

If your business has been bullied by a big brand owner, please make the time to submit comments!

Brand Geek Takeaway:  Being the “biggest” or “the most popular” company that does whatever your company does, does not give your company the right to over-assert its trademark rights.  Overreaching may draw negative attention to your brand and could expose your business to having to pay sanctions and attorneys’ fees.  The USPTO will submit a report to Congress next year, and hopefully the penalties for bullying will grow even more severe.  If your business is bullied, consider going to the media!  The more attention this issue gets, the more likely legislative remedies will be enacted to protect businesses from brand bullying.

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.


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