Brand Bully Backlash

NO MORE BRAND BULLYING!!

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 TMFeedback@uspto.gov 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.