Trademark Owners: USPTO Promulgates Request for Comments on “Bullying” Trademark Litigation Tactics

November 18, 2010

The United States Patent and Trademark Office (“USPTO”) recently issued a request for comments concerning perceived overreaching trademark litigation tactics that may harm small businesses. The USPTO promulgated this request as part of a study mandated in the recent Trademark Technical and Conforming Amendment Act of 2010 (“the Act”). In addition to conducting the study, the Act required the Secretary of Commerce to report and make policy recommendations to the House and Senate Judiciary Committees within one year of the law’s passage regarding: “(1) the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of rights granted to the trademark owner; and (2) the best use of Federal Government services to protect trademarks and prevent counterfeiting.”

In its request for comments, the USPTO is seeking feedback from trademark owners and practitioners regarding the first issue posed by the Act: alleged corporate use of “bullying” tactics to enforce trademark rights “beyond a reasonable interpretation” of actual rights and any resulting harm to small businesses. The survey questions are targeted to elicit, among other things, anecdotal evidence regarding whether small businesses often agree to cease use or abandon their trademarks in the face of a cease-and-desist letter or potentially costly oppositions or lawsuits initiated by corporations. In addition, the survey requests information regarding instances where trademark plaintiffs withdrew demands, or where a court or the Trademark Trial and Appeal Board (“TTAB”) imposed sanctions and/or assessed attorneys’ fees against a plaintiff.

The USPTO offers a definition of a “bully” 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.” Though consistent with the Act’s mandate, this definition is vague and subject to wide interpretation. Of particular concern, there is no guidance on or recognition of the difficult balance between enforcement actions that may overextend the rights of a trademark owner and those that are believed to be necessary policing efforts, essential to preserving a trademark owner’s rights and investments.

Because the Act’s directive mandates that results of the study be presented to the House and Senate Judiciary Committees, this survey could have an impact on the future trademark enforcement landscape and its friendliness (or lack thereof) toward trademark owners (large or small) seeking to protect their marks. Accordingly, Fulbright encourages its clients with trademark assets or those with an interest in trademark enforcement to take the time to respond to and comment on this survey. The USPTO will consider responses that address any portion of the listed questions in addition to any further comments. A complete list of the survey questions is posted below and can also be found online at http://www.uspto.gov/trademarks/bullies_survey.jsp. Responses should be sent to TMFeedback@uspto.gov no later than January 7, 2011.

This article was prepared by Tracy Stewart DeMarco (tdemarco@fulbright.com or 202 662 4653) and J. Paul Williamson (pwilliamson@fulbright.com or 202 662 4545) from Fulbright’s Intellectual Property and Technology Practice Group. For additional information, please contact Tracy Stewart DeMarco or J. Paul Williamson.

[1] Pub. L. No. 111-146, 124 Stat. 66 (2010).

Complete List of Survey Questions

  1. Please identify whether you are a trademark owner or practitioner, and the general size and nature of your business or trademark practice, including the number of trademark applications and registrations your business has, or your practice handles. Please note that the USPTO will fully consider any comments you submit, even if you choose not to identify yourself in a particular manner.
  2. In approximately the last 5 years, please describe any instances of 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.
  3. Please describe situations where you have been involved in receiving a cease-and-desist letter. Anecdotal information might include, but is not limited to, a description of whether the letter resulted in the small business ceasing its use of one or more marks, or whether the sender of the cease-and-desist letter withdrew or abandoned its demands against the small business owner.
  4. Please describe situations where you have been involved in trademark litigation in state or federal courts. Anecdotal information might include, but is not limited to, a description of whether the lawsuit settled on the basis of the small business agreeing to cease its use of one or more marks, or on the basis of the plaintiff withdrawing or abandoning its trademark-related allegation(s). Alternatively, relevant information might include whether such lawsuits resulted in a court judgment and the nature of the judgment (such as requiring the small business to cease its use of one or more marks, assessing monetary liability (damages, lost profits, or attorneys’ fees) against the small business, requiring the plaintiff to pay the defendant’s attorneys’ fees, or imposing sanctions against the plaintiff under Rule 11 of the Federal Rules of Civil Procedure).
  5. Please describe situations where you have been involved in opposition/cancellation proceedings instituted at the USPTO against small business owners. Anecdotal information might include, but is not limited to, a description of whether the proceedings settled on the basis of the small business agreeing to abandon its application(s) for one or more marks, or whether the proceedings settled on the basis of the plaintiff withdrawing or abandoning its notice of opposition or cancellation petition. Alternatively, relevant information might include a description of whether such proceedings resulted in a decision by the USPTO Trademark Trial and Appeal Board (“TTAB”) refusing to register/canceling one or more marks owned by the small business, or whether such proceedings resulted in the TTAB imposing sanctions against the plaintiff under Rule 11 of the Federal Rules of Civil Procedure.
  6. Do you think trademark “bullies”[1] are currently a problem for trademark owners, and if so, how significant is the problem?
  7. Do you think aggressive litigation tactics are more pervasive in the trademark area than in other areas of the law?
  8. Do you think the USPTO has a responsibility to do something to discourage or prevent trademark bullying? If yes, what should the USPTO do?
  9. Do you think the U.S. courts have a responsibility to do something to discourage trademark bullies? If yes, what should the U.S. courts do?
  10. What other U.S. agencies may have a responsibility to do something about the problem?
  11. Do you think Congress has a responsibility to do something to discourage or prevent trademark bullying? If yes, what should Congress do?
  12. Please provide any other comments you may have.