A few weeks ago, I argued that the term “trademark bully” should be carefully applied and not overused. The tendency is to inflate every act of trademark patrolling as bullying. Of course, the term didn’t arise without reason – there are certainly examples of bullying by trademark owners where the scope of the owner’s rights simply doesn’t extend to recipient’s usage. Those examples can be David-and-Goliath-type stories or just the reverse, as Vegas Trademark Attorney Ryan Giles notes.
The PTO recently completed a study titled “Trademark Litigation Tactics and Federal Government Services to Protect Trademarks and Prevent Counterfeiting” to determine whether trademark bullying was a real problem. It was relatively inconclusive regarding whether small businesses are harmed by unreasonable enforcement tactics, determining that “if abusive tactics are a problem, such tactics may best be addressed by the existing safeguards in the litigation system in the U.S. and by private sector outreach, support, and education relating to these issues.” Seattle Trademark Lawyer Michael Atkins raises some well-thought issues with those determinations and the PTO’s solutions to the problems. Michael argues that while the solutions, which are mostly geared toward educating the private sector about trademark law, ignore market realities. He thinks the award of attorney’s fees to prevailing parties should be more aggressive than it currently is.
I agree. Questions of right and wrong persist in the mind of the bullied business owner only until they hear what litigation could cost. Without a high likelihood of being reimbursed those costs – indeed, even with a high likelihood of getting paid back – the initial outlay in money and time can make warding off a bully very unattractive to a bullied business owner. If the owner doesn’t have the cash flow to support defensive litigation, he or she may not have a choice in whether to fight or give in.
Unfortunately, trademark law has bullying built into it in a way. Trademark owners are required to patrol for inappropriate use of their marks. Given enough mark owners searching, inevitably, some will overreach.