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Archive for September, 2012

Making a trademark dad proud

Posted by ipelton on: September 26th, 2012

Last week, my seven year old son had a project for school in which he had to note three “cool” things about him.

Note the proper usage of the ® trademark registration symbol!

making trademark dad proud!

Via a recent FOIA request, I was able to obtain copies of the correspondence between the USPTO’s Office of the Solicitor and the outfit that was known as U.S. Trademark Registration Office. U.S. Trademark Registration Office caused much confusion during a few weeks earlier this year as they sent out a trademark scam letter that was particularly troubling.

The USPTO was able to get U.S. Trademark Registration Office to comply with its demands and change its name and its mailings. However, it looks like the company was not punished in any way for their activities.

The USPTO should be commended for handling the situation quickly, efficiently, and – most important – effectively.

See below for the FOIA response from the USPTO and the correspondence between the USPTO and the U.S. Trademark Registration Office.

USPTO correpondence with U.S. Trademark Registration Office

Response to F-12-00215 Cover Letter

 

Last week I spoke at the New York State Bar Association and presented on “Trademark Bullying & the Streisand Effect“. The talk was very well received. My favorite feedback was that perhaps trademark attorneys, when counseling their clients about the risks of being “shamed” or having social media backlash after sending a cease and desist, should show my slides and present the stories of the “Streisand Effect” enumerated therein. Perhaps even strong-willed client CEOs would then recognize the risk of being shamed and re-visit a very aggressive trademark enforcement policy.

My slides and paper follow below.

Trademark Bullying & the Streisand Effect (Erik Pelton – NYSBA 2012 IP conference)

 

A formula for measuring trademark bullies

Posted by ipelton on: September 20th, 2012

Several months ago I wrote about what make a trademark bully. I noted that:

I look at two factors to asses whether a “bullying” label is appropriate: whether the claim is over-reaching and whether the tactics are heavy handed. Over-reaching occurs when the alleged infringer is really making no commercial impact on the enforcer. For example, when the alleged infringer’s use is trivial; their industry or market or products or services are quite different; or there are already tons of third party uses of similar marks and the claim has no merit. Bullying tactics include unreasonably demanding letters, such as: “respond that you are in compliance with all of our demands within 48 hours.” Or seeking discovery that is overly burdensome and irrelevant just to run up costs for the other party. Or failing to seek a compromise that accomplishes the goal of avoiding confusion or dilution before litigating.

I presented this theory last week to an audience at the New York State Bar Association’s IP conference, where it was general met positively. So I further enhance my formula:

to determine if company X is a trademark bully

= [ strength/weakness of claim’s merits] x [ harshness of legal tactics used ]

A claim with tenuous merits may make for a bully regardless of the tactics. Many have praised Jack Daniel’s as the opposite of a bully for its gentle request that an author to change the cover of his book – because they asked him with extreme courtesy and made no ‘demands’ – but arguably they were still bullying because the law gives them no actual right to force him to change the cover.  

If a plaintiff’s tactics are overly harsh – requesting unnecessary and burdensome discovery, or filing motions for the purposes of delay, to give two examples – they should be labeled a bully even if they have a reasonable claim on the merits.

Reasonable people can disagree about whether claims have merit or tactics are abusive, but at some point a threshold is crossed and, according to my formula, a bully is born.

 

Reasonable claim

with

Reasonable tactics

[NOT BULLY]

 

Reasonable claim

with

Unreasonable tactics

[bully?]

 

Unreasonable claim

with

Reasonable tactics

 [bully?]

 

Unreasonable claim

with

Unreasonable tactics

[BULLY!]

 
(C) 2012 Erik M. Pelton & Associates, PLLC

In the diagram above, if a plaintiff makes a reasonable claim with reasonable tactics, it cannot fairly be labeled a bully.

If a trademark plaintiff is squarely in the lower right box, they are a trademark bully.

If a company’s actions fall within the remaining two boxes, they are open to potentially being accused of bullying.

What do you think, does the formula work? Any feedback in the comments below is greatly appreciated!

(C) 2012 Erik M. Pelton & Associates, PLLC

On my recent trip to New York, I found many wonderful and creative names and logos. See my photos below.

A few bland ones as well. I once wrote that Austin, Texas had the best trademarks, but New York – in part because of sheer volume – could certainly give any city a run for its money!

Some of the highlights:

KNOT JUST PRETZELS

CRACK PIE

THE PERFECT PINT

KENNY’S CASTAWAYS

DIG INN

PECULIER PUB