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USPTO Request for Comments: Trademark Litigation Tactics

Posted by ipelton on: October 14th, 2010

As part of the study mandated by Congress about overreaching trademark enforcement efforts and their effect on small businesses, the USPTO yesterday issued a request for comment reprinted below.

I will certainly be commenting. I am also exploring options for putting together a group or groups of attorneys and businesses to discuss making a collective statement with greater impact. In a nutshell, I believe that there is a lot of bullying and taking advantage of small businesses by those with deep pockets. And the system almost encourages this behavior and certainly does not discourage it. This trademark bullying affects and stifles innovation, intellectual property development, jobs, and the economy. While infringement and counterfeiting hurt the economy, so does the over-enforcement of trademarks. If you are interested in discussing or joining such a statement, let me know in the comments or by sending me an email.

One has to wonder what the result of study and report will produce. The law was signed on March 17, 2010 and requires that the study be completed in less than 1 year. The USPTO request for comments runs until January 7, 2011, which does not leave much time for any further study or report or testimony or discussion prior to completing the work for Congress. Also, no other government agency, including the office of the Intellectual Property Enforcement Coordinator has publicly issued a request for comments, conducted any hearings, or to otherwise discussed the study mandated by Congress.

Here is the full text of the USPTO request for comment:

The Trademark Technical and Conforming Amendment Act of 2010 became effective on March 17, 2010.  Pub. L. No. 111-146, 124 Stat. 66 (2010).  The Act includes a provision that the Secretary of Commerce, in consultation with the Intellectual Property Enforcement Coordinator, shall conduct a study and report to the Committees on the Judiciary of the House and Senate on “(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.”  Trademark Technical and Conforming Amendment Act § 4.  The study and report shall also include any policy recommendations deemed appropriate.

In connection with the study, the USPTO is requesting feedback from U.S. trademark owners, practitioners, and others regarding their experiences with litigation tactics, especially those involving an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.  The USPTO also is eliciting suggestions to address any allegedly problematic litigation tactics.

Please send your response to the following questions, or any additional comments, to TMFeedback@uspto.gov, with the subject line “Small Business Study.”   In order to ensure that your feedback may be considered, please submit it no later than January 7, 2011.  Although the USPTO would find it most beneficial to receive responses to every item, you may answer all or any portion of the following questions.

1.  Please identify whether you are a trademark owner or practitioner, and the general size and nature of your business or trademark practice, including the number of trademark applications and registrations your business has, or your practice handles.  Please note that the USPTO will fully consider any comments you submit, even if you choose not to identify yourself in a particular manner.

2.  In approximately the last 5 years, please describe any instances of which you have first-hand knowledge where a small business may have been the target of litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.

3.  Please describe situations where you have been involved in receiving a cease-and-desist letter.  Anecdotal information might include, but is not limited to, a description of whether the letter resulted in the small business ceasing its use of one or more marks, or whether the sender of the cease-and-desist letter withdrew or abandoned its demands against the small business owner.

4.  Please describe situations where you have been involved in trademark litigation in state or federal courts.   Anecdotal information might include, but is not limited to, a description of whether the lawsuit settled on the basis of the small business agreeing to cease its use of one or more marks, or on the basis of the plaintiff withdrawing or abandoning its trademark-related allegation(s).  Alternatively, relevant information might include whether such lawsuits resulted in a court judgment and the nature of the judgment (such as requiring the small business to cease its use of one or more marks, assessing monetary liability (damages, lost profits, or attorneys’ fees) against the small business, requiring the plaintiff to pay the defendant’s attorneys’ fees, or imposing sanctions against the plaintiff under Rule 11 of the Federal Rules of Civil Procedure).

5.  Please describe situations where you have been involved in opposition/cancellation proceedings instituted at the USPTO against small business owners.  Anecdotal information might include, but is not limited to, a description of whether the proceedings settled on the basis of the small business agreeing to abandon its application(s) for one or more marks, or whether the proceedings settled on the basis of the plaintiff withdrawing or abandoning its notice of opposition or cancellation petition.  Alternatively, relevant information might include a description of whether such proceedings resulted in a decision by the USPTO Trademark Trial and Appeal Board (“TTAB”) refusing to register/canceling one or more marks owned by the small business, or whether such proceedings resulted in the TTAB imposing sanctions against the plaintiff under Rule 11 of the Federal Rules of Civil Procedure.

6.  Do you think trademark “bullies”[1] are currently a problem for trademark owners, and if so, how significant is the problem?

7.  Do you think aggressive litigation tactics are more pervasive in the trademark area than in other areas of the law?

8.  Do you think the USPTO has a responsibility to do something to discourage or prevent trademark bullying?   If yes, what should the USPTO do?

9.  Do you think the U.S. courts have a responsibility to do something to discourage trademark bullies?  If yes, what should the U.S. courts do?

10.  What other U.S. agencies may have a responsibility to do something about the problem?

11.  Do you think Congress has a responsibility to do something to discourage or prevent trademark bullying?   If yes, what should Congress do?

12.  Please provide any other comments you may have.

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