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Trademark ?Bullies? may be in the USPTO?s Sights

By Stephanie Robinson

A business owner?s perception of vigorous trademark enforcement in many cases depends entirely on whether he or she was last on the passing end or the receiving end of a cease & desist letter. For businesses that have been accused of trademark infringement, those allegations often seem to be nothing but overreaching by trademark owners trying to make a quick buck based on an unintentional and harmless oversight. However, for many of those trademark owners, failure to police unauthorized, third-party use of identical or arguably confusingly similar marks may mean loss of brand value or even the ?genericization? of their once-valuable marks. It appears that the federal government may be in the process of weighing in on the question of where to draw the line between valid trademark policing and invalid trademark ?bullying.? Pursuant to a mandate in the Trademark Technical and Conforming Amendment Act of 2010, the U.S. Patent & Trademark Office recently posted a request for public input regarding deleterious effects of so-called trademark ?bullies? on small business. The Act requires the Secretary of Commerce and Intellectual Property Enforcement Coordinator to conduct a study and prepare a report to Congress regarding ?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 the rights granted to the trademark owner? and whether the federal government should play a role in curbing abusive tactics by trademark owners. The USPTO?s request for comment is available here. The deadline to submit comments is January 7, 2011. While the concerns reflected in the ACT are understandable, it would be unfortunate if Congress were to place any arbitrary restraints on the ability of businesses to police their brands. Unlike patents and copyrights, trademarks generally are not good subject matter for ?trolling? ? or seeking to reap a windfall based on claims that a third party has infringed acquired intellectual property rights. The validity of a trademark depends in large measure on actual use in commerce, which is a distinction generally absent in other federal IP regimes. That distinction often is effective incentive for a business to be selective in its trademark policing efforts, and while there may be businesses that are arguably abusive in their policing efforts, an effort by Congress to draw the necessarily fine line between what is and is not acceptable enforcement could result in brand owners having to wait until it is too late to protect their rights. It will be very interesting to see what actions are taken, if any, in response to any comments submitted to the USPTO.

Full post as published by Business and Technology Law on November 11, 2010 (boomark / email).