Update: Trademark ‘bullies’ or ‘litigation tactics’ study

Here is a roundup of recent items related to the USPTO’s study of trademark litigation tactics (‘bullies’):

• Comments to the USPTO regarding “Trademark Litigation Tactics” are due today, February 7. See USPTO request for comments.
• The National Small Business Association recently published a news alert about the USPTO study. (Disclosure: Out firm is a member and brought the matter to their attention.)
• The comments of Scott Smith of BizStarz have been published online here. The comment detail his experience battling with the owners of Entrepreneur magazine as well as several other well known trademark disputes.
• The USPTO is hosting this week on February 11th a day long symposium at Wayne State University in Detroit titled “Protecting Your Intellectual Property in the Global Marketplace” featuring an hourlong “Roundtable on Trademark Litigation Tactics: Is There a Bull in the Trademark Shop?”.
• Ron Coleman, the prolific author of  the excellent Likelihood of Confusion® blog, has written a thoughtful opinion piece examining what is and what is not a ‘bully’ in the trademark context in Intellectual Property Magazine called “Bully for who?”
• Attorney Steve Baird points out on the excellent Duets Blog that congress recently amended the language of the study to remove the phrase “by corporations” when characterizing potentially overly aggressive trademark litigation or tactics.  From the bill: TRADEMARK TECHNICAL AMENDMENTS ACT.—Section 4(a)(1)
  of Public Law 111–146 is amended by striking ‘‘by corporations attempting’’ and inserting ‘‘the purpose of which is’’. 
  • And here Steve details how the language of the study was changed by the USPTO so that “trademark bullying” now = “aggressive trademark litigation tactics”?
• Minnesota CLE will be hosting a webinar: Strategies for Dealing with “Trademark Bullies” on March 2, 2011. Details here.

We are actively monitoring these and related developments. The Congressional bill which created the USPTO study (S. 2968 here) required that “study and report” be provided “to the Committee on the Judiciary of the Senate and the Committee on the Judiciary of the House of Representatives” not later “than 1 year after the date of enactment of this Act” which became effective on March 17, 2010.

The USPTO and Department of Commerce have 5 weeks left before reporting to Congress. What will they do? Will comments be made public? Will there be more roundtables or other discussions? Will Congress hold hearings? Your guess is as good as mine!

Related Post:

• Our firm’s Comments on “Small Business Study” by the U.S. Patent and Trademark Office