Trademark Bullying

May 12, 2011 – Blog Post

“Trademark Bullying” -- USPTO reports it is unclear whether big companies are bullying smaller companies using unreasonable litigation tactics, or the threat of expensive litigation, but recommends “private sector” involvement in resolving this potential issue.

On April 28, 2011, having reviewed the 79 public comments to its survey, popularly known as the “Trademark Bullying Survey,” the U.S. Patent and Trademark Office (“USPTO”) released its report to Congress, Trademark Litigation Tactics and Federal Government Services to Protect Trademarks and Prevent Counterfeiting(see above pdf). In a nutshell, the USPTO, working with the recently appointed Intellectual Property Enforcement Coordinator of the Office of Management and Budget, a part of the Executive Office of the President, determined that based on the information available, it is not clear “whether small businesses are disproportionately harmed by enforcement tactics that are based on an unreasonable interpretation of the scope of an owner’s rights.”

Respondents included several small business owners as well as intellectual property organizations (the American Bar Association Intellectual Property Section), and a few private sector attorneys. The survey showed 31% of respondents feel aggressive litigation tactics are a problem in trademark cases, but 61% of respondents did not answer the question of whether such tactics are a problem. In preparing its response to the USPTO survey, the ABA’s Intellectual Property Section conducted its own survey regarding aggressive litigation tactics in the area of trademark law. 44% of the 196 respondents to this question in its survey stated that such aggressive litigation tactics are no more common in trademark cases than in other areas of the law. Ultimately, despite the fact that the survey results did not clearly show that aggressive litigation tactics are more common in trademark cases than in other areas of the law, the USPTO acknowledged that it is possible small businesses are more likely to be adversely affected by aggressive tactics in this area of the law.

Therefore, the USPTO stated it will take the following actions:

  • Engage the private sector about providing free or low-cost legal advice to small businesses via pro bono programs and Intellectual Property Rights clinics;
  • Engage the private sector about offering continuing legal education programs focused on trademark policing measures and tactics; and
  • Enhance Federal agency educational outreach programs by identifying resources that enable small businesses to further their understanding of trademark rights, enforcement measures, and available resources for protecting and enforcing trademarks.

While “Trademark Bullying” is not a proven problem, the USPTO appears to believe the credibility of the threat warrants an educational outreach program to assist small business owners in understanding their rights and to encourage lawyers and law firms to make it easier for small businesses to benefit from, and not be unfairly harmed by, the trademark system.