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Using publicity to fight trademark cases

Posted by admin on: January 20th, 2011

In recent years, more trademark defendants have taken their case to the public – often using social media – to pressure the accuser to reconsider its position. For example, see South Butt, Vermonster dispute, or Wikipedia’s use of the FBI logo.

A recent paper by Saint Louis University School of Law Assistant Professor Leah Chan Grinvald, “Shaming Trademark Bullies” explores the issues of trademark bullying, using publicity as part of a defense strategy, and related possible legal reforms. As I have noted before, social media makes it easier today for small businesses to gain publicity for their cause, and this may be useful in certain trademark disputes. When sending out trademark demand (or ‘cease and desist’) letters, our firm frequently advises clients to consider how the situation could play out if the accused attempts to use publicity to support their cause or even posts the letter online.

To download Professor Grinvald’s full article, see here.

The article is quite interesting and contains a well presented analysis of the author’s definition of trademark “bullying” (although I do not necessarily agree with every example cited – each case presents unique facts and elements which is part of the difficulty is detailing a “bullying” theme) as well as the financial and systematic hurdles facing small business owners that are accused of trademark infringements. I hope Professor Grinvald submits the article to the USPTO as part of its request for comments, and that others follow her lead to study the issues.

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