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How Not to Be a Trademark Troll

By Stephanie Robinson

Most of us have heard of patent trolls. Recently, we have seen the ascendance of the copyright troll. Trademark trolls, by contrast, probably shouldn?t even exist. After all, one of the principal concepts allowing a person to claim exclusive rights in a trademark is (supposed to be) that person?s actual use of the trademark in commerce, and actual use of IP is not something with which most trolls are supposed to be familiar. Trolls, the story goes, exist in shadowy recesses, ready to swing their quietly acquired IP clubs against the unwitting in the hopes of spilling a little windfall. However, despite the oil-and-water prospects for a relationship between trademarks and trolling, Edge Games, Inc. and its founder, Dr. Tim Langdell, nevertheless have made a go at asserting claims against various players in computer gaming-related industries based on allegedly unauthorized use of the word ?edge,? which forms the basis of several trademarks held by Edge and Langdell. Somewhat amusingly, though, in a recent opinion issued by the U.S. District Court for the Northern District of California, those attempts ?flamed out? in spectacular fashion. In this case, Edge filed suit against Electronic Arts (?EA? ? a recognized heavyweight in the gaming industry), alleging that EA infringed its marks by releasing a game with the title ?Mirror?s Edge? in 2008 and requesting that the court grant a preliminary injunction against EA?s use of the mark pending the outcome of the suit. In a colorfully illustrated opinion, the court denied the request, citing not only to the Edge?s failure to demonstrate a likelihood of confusion with regard to EA?s use of the MIRROR?S EDGE® mark, but also to what the court described as ?numerous items of evidence that plaintiff willfully committed fraud against the USPTO in obtaining and/or maintaining registrations for many of the asserted ?EDGE? marks, possibly warranting criminal penalties if the misrepresentations prove true.? Indeed, the evidence described in the opinion appears to indicate that Edge and Langdell repeatedly had submitted counterfeit use specimens and false information to the U.S. Patent and Trademark Office in order to secure and maintain the registrations upon which Edge had filed suit. Overeager business owners seeking to secure trademark rights would do well to take a look at the opinion for its numerous examples of how not to be a trademark owner (to say nothing of trying to be a trademark troll). However, even where trademark fraud does not rise to the possibly criminal levels described in this opinion, it is important to keep in mind the fact that the Trademark Trial and Appeal Board takes a very hard line against irregularities in trademark applications and maintenance filings and routinely cancels whole registrations based on inaccuracies pertaining to only one class of goods or services within the scope of a registration. It is never a bad idea to have a knowledgeable attorney review those filings prior to submission.

Full post as published by Business and Technology Law on October 08, 2010 (boomark / email).