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THE IMPACT OF TRADEMARK BULLYING

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Trademark law protects a trademark owner’s exclusive right to use a trademark when use of a mark by another party would be likely to cause consumer confusion as to the source or origin of goods. To establish a violation of the Lanham Act for either a registered mark, the plaintiff must demonstrate that: (1) He has a valid and legally protectable mark; (2) He owns the mark; and (3) The defendant’s use of the mark to identify goods or services causes a likelihood of confusion.

As a trademark opposition attorney, I have first-hand knowledge of trademark bullying tactics that are designed to outspend and harass small business trademark applicants into abandoning their trademark application.

The practice also spills into federal court actions for trademark infringement, cybersquatting, and other related matters. This litigation tactic is becoming increasingly popular and has long-lasting, harmful effects.

As part of the Trademark Technical and Conforming Amendment Act of 2010, Congress instructed the United States Patent and Trademark Office (USPTO) to take the unusual step to address this issue by sending out a trademark bullying survey to trademark attorneys, small business owners, and interested parties to determine whether they had been the victims of trademark bullying. The survey invited respondents to share their experiences with trademark litigation tactics, “especially those that may involve an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to trademark owners.”

Solicited examples of trademark litigation bullying tactics included: abuses of trademark, cease and desist letters, domain name cease and desist letters, trademark opposition proceedings, trademark cancellation proceedings, and other trademark-related matters that have adversely impacted the respondents, their clients, and/or businesses.

The resulting Report to Congress, Trademark Litigation Tactics and Federal Government Services to Protect Trademark and Prevent Counterfeiting, highlighted some important responses. Approximately 60% of respondents viewed trademark bullying as a substantial problem. A majority of respondents stated that Congress has a responsibility to discourage or prevent aggressive trademark litigation tactics. Many respondents also encouraged the Trademark Trial and Appeal Board (TTAB) to amend its rules to create and enforce tough sanctions against such behavior in trademark opposition proceedings.

A petition for cancellation of a U.S. trademark registration is available to any party who believes that an already existing federal trademark registration should not be allowed to remain an active registration due to a variety of grounds. However, trademark bullies who initiate proceedings against parties should be aware that their tactics have caught the attention of Congress and the USPTO. Soon, trademark bullies may find that their aggressive litigation strategies don’t pack as much punch to trademark attorneys, small business owners, and interested parties.

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