IP Heavyweights Weigh in on Brand Bullying

Insight February 23, 2011

AIPLA and INTA submitted comments to the USPTO in response to the PTO's request for feedback on Trademark Litigation Tactics

       I have written about trademark bullying in relation to one of my client’s experiences with Volkswagen and in general.  I also blogged about this issue for a friend’s blog, Smaller Box, yesterday.  My colleague and blogging inspiration, Steve Baird — of the wonderful, Duets Blog — recently posted that both AIPLA and INTA submitted comments to the USPTO in response for the PTO’s Request for Feedback on Trademark Litigation Tactics.

       As not everyone is a legal geek, it should be noted that the AIPLA and INTA are the two largest organizations of intellectual property attorneys.

        AIPLA is “a national bar association constituted primarily of lawyers involved in the practice of patent, trademark, copyright, trade secret, and unfair competition law, as well as other fields of law affecting intellectual property.”

       INTA is “a not-for-profit membership association dedicated to the support and advancement of trademarks and related intellectual property as elements of fair and effective commerce.”

       According to AIPLA’s comments, it represents approximately 16,000 members, while INTA’s comments state that it has roughly 5,800 members.  Needless to say, these organizations represent significant clout in many intellectual property circles.  So, what do they have to say?

        Well, AIPLA begins by taking issue with the PTO’s use of the term “trademark bullies:”

       "The Bill and ensuing comments have inappropriately been characterized as a discussion about “bullying.” Notably, the USPTO questionnaire asks, “Do you think trademark ‘bullies’ are currently a problem for trademark owners, and if so, how significant is the problem?”2 The following clarification appears in a footnote: “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.” AIPLA believes that this definition unfairly characterizes trademark owners who assert their legitimate rights under the law and assumes ill intent without defining what might be considered “harassment” or “intimidation.” Reasonable minds can differ as to the proper scope which should be afforded to marks and whether a likelihood of confusion and/or a likelihood of dilution may exist.

        While AIPLA does not condone abusive tactics, aggressive enforcement of a trademark does not automatically equate to abuse. Use of the pejorative terms “bullies” and “bullying” is misleading and unfair in light of trademark owners’ duty to police their marks and protect consumers from marketplace confusion, as discussed more fully below."

       More importantly, however, AIPLA recommends against regulation aimed at curbing trademark bullying!  " AIPLA advises against regulation aimed at trademark abuse in favor of existing remedies. Trademark enforcement protects consumers, and overly aggressive litigation tactics are no more pervasive in trademark cases than other civil litigation."

       Specifically, AIPLA finds that enacting specific measures to combat trademark bullying "runs the risk of contravening the fundamental purpose of the Lanham Act: consumer protection. Specifically, such measures would be: (a) contrary to the public interest in avoiding marketplace confusion; (b) inconsistent with long-standing principles of trademark law which encourage, and even require, trademark owners to aggressively police their marks; (c) incapable of consistent application; (d) addressing situations which have not been shown to be a significant problem; and (e) unnecessary in view of existing statutory provisions, civil procedure rules, and the inherent power of courts to protect against meritless claims."

       Wow!  I find the fourth point (d) most interesting, as the AIPLA must have shaken its magic ball to determine that trademark bullying “has not been shown to be a significant problem.”  Last I checked, the PTO survey was designed in part to ascertain how big the problem actually is.

       Maybe I’ll like what INTA has to say better . . . or not . . .

       INTA’s introductory comments state that "INTA appreciates the efforts to bring grater clarity to trademark law and practice. However, the allegation that there are unfair legal tactics by large brand owners specifically targeted against small businesses in trademark enforcement actions demonstrates a misunderstanding of the current law and legal obligations of trademark owners."

        Not surprisingly then, "INTA believes that the instrests of trademark owners both large and small are well served by the established practices and rules in litigation."

       Somewhat surprisingly (or perhaps my idealism is getting in the way): "INTA suggests that a greater emphasis on education would assist small businesses and the general public in understanding trademark law and the obligations of rights holders."

       While I agree that public education will help reduce instances of infringement, this survey was not about preventing infringement, it was about preventing brand-owners from over-asserting their rights, something I see annually, and not just by big brand owners.   Leo Stoller was a prolific trademark bully and he was not a big brand owner.

       INTA’s conclusion?  Much the same as AIPLA’s: "INTA believes that the current statutory and regulatory framework effectively deals with the issues and provides the courts and TTAB with well-established mechanisms to address and discourage frivolous claims."

Brand Bullying isn’t limited to litigation tactics. I bet most instance of trademark bullying never get that far.  I have helped several of my clients resolve infringement disputes with trademark bullies, always by changing marks rather than wasting the time and money on litigation.  While the comments of the AIPLA and INTA hold a lot of weight, I am sure neither organization ever has experienced the wrath of a brand bully.  Hopefully the voices of the victims of bullying also will be heard.