USPTO Attempts to Tackle Trademark Bullying
The USPTO recently posted a request for feedback from practicing trademark attorneys, trademark-owners, and others about their experiences with litigation tactics.
The request springs from the “Trademark Technical and Conforming Amendment Act of 2010,” enacted earlier this year (see Public Law No. 111-146). The bill (introduced by Sen. Leahy from Vermont) passed unanimously and without any amendments. It modifies §§ 7, 8, 15, 21 and 71 of the Lanham Act and also adds, under the Madrid Protocol, a 6-month grace period right after the statutory period for registration expiration.
The curious part of the bill, however, is section 4, titled “study and report,” which Sen. Leady tacked on at the very end of the bill. This section requires that within a year after the enactment of the bill, the Secretary of Commerce must study, report and make recommendations to the Senate and House Judiciary Committees on the two following aspects:
(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 the rights granted to the trademark owner; and
(2) the best use of Federal Government services to protect trademarks and prevent counterfeiting.
Some relatively recent examples of “trademark bullying” (or potential bullying) include Facebook claiming it owns ‘face”, Apple claiming it owns ‘Pad’, the NYTimes suing over an old logo, Monster suing a company for a brand of beer called Vermonster, Abercrombie excluding other parties from using the name Hollister and Intel suing a Chinese travel agency over its name ‘intellifeTravel’ just to name a few.
We all know that here in America, people (and companies) love to litigate. But in Trademark cases, there is a need to police one’s mark. What I mean is: how do we know if trademark bullies are actually being bullies and not just standing up for what is rightfully theirs? After all, the point of trademark law is to prevent the relevant consumer from getting confused as to where a product comes from, and the more products we have out there with similar names, the more confusion we are potentially breeding. And also let’s not forget that if you’ve registered a mark, it’s fair that you get to be the only one to use it. On the other hand, when companies like Facebook attempt to claim that the term ‘face’ belongs to them, there’s a little alarm that goes off in my head.