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.
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Reasonable claim with Reasonable tactics [NOT BULLY]
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Reasonable claim with Unreasonable tactics [bully?] |
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Unreasonable claim with Reasonable tactics [bully?]
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Unreasonable claim with Unreasonable tactics [BULLY!] |
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
