As detailed here before, the USPTO recently sought comments about ‘trademark litigation’ tactics (a.k.a trademark bullies or small business study) as part of a report due to Congress next month.
The comment period closed last week after two extension. My comments were previously published.
Four main groups of attorneys in the field of trademarks and intellectual property have published their comments.
AIPLA (American Intellectual Property Lawyers Association) comments
ABA-IPL (American Bar Association Intellectual Property Law Section) comments
INTA (International Trademark Association) comments
IPO (Intellectual Property Owners’ Association) comments
I commend each organization for making their comments publicly available. But I agree with very little of the substance of their comments.
IPO: “IPO does not believe that trademark “bullies” are a problem for trademark owners.” The IPO actually tries to indicate that the problem may be opposition to that in the study, namely small businesses unfairly causing problems for others. “Indeed, several IPO members noted a trend towards more aggressive assertion and defense of trademark claims by individuals and small organizations, particularly where they represent themselves or have obtained legal representation on a contingency basis.” The IPO comments cite Leo Stoller to support its claims despite the clear evidence that he is but one individual, not a part of a trend. “IPO notes that in trademark case law, one can find examples of both plaintiffs and defendants engaging in objectionable behavior.”
Summary: Problem, what problem? If anything, defendants might be pestering or causing problems with tactics for plaintiffs.
ABA-IPL: “Overall, however, curbing abusive trademarklitigation practices should be left to the judiciary on a case-by-case basis. A “one size fits all”approach does not appear to be warranted.” There is “no consensus about many of these issues, lending further support to theconclusion that determining litigation misconduct – in a trademark case or otherwise – requiresa fact-intensive analysis that cannot be addressed by a single, catch-all legislative solution.” It “it appears that theexisting regimes to handle abusive conduct are sufficient to address concerns of abusivetrademark litigation conduct.”
Summary: Even if there is a problem, why should anyone try to fix it as a whole when case by case courts could potentially do something.
INTA: “INTA believes that the interests of trademark owners both large and small are well served by the established practices and rules in litigation. INTA suggests that a greater emphasis on education would assist small businesses and the general public in undrstanding trademark law nad hte obligations of rights holders.” “INTA believes that the courts currently have sufficient tools that are balanced and adequate to discourage unfair litigation practices.” “INTA recommends additional public education and outreach to raise awareness among the pubic and small business owners of legal protections in the system.”
Summary: There is no problem and the system should not be changed in any manner. Ff anything small businesses and the public just need to be better educated about the issues.
AIPLA: “AIPLA advises against regulation aimed at trademark abuse in favor of existing remedies.” Legislative or other action addressing the topics in the study would “restrict or chill the trademark enforcement process.” “AIPLA is not aware of significant abusive enforcement tactics.”
Summary: The status quo is just fine; and enacting any changes would seek to address a problem that does not exist.
In sum, these groups believe there is no problem and even if there were one the existing remedies would suffice for addressing it. I disagree strongly with these conclusions – while the “problem” may not be drastic or easy to define, I believe that several changes to the system, increased education, and additional remedies available to defendants to address egregious problems would improve the system.
Perhaps the additional defenses or causes of action are the proper remedy — because if there is no problem as the 4 main IP law associations suggest then they would never be used or successful and the net change to the trademark law and practice would be minimal. And if they are wrong and there is a problem, recognizing defenses and causes of action dealing with abusive tactics or over-zealous enforcement would go a long way towards making the system more just for all trademark owners and users.
The contents of the USPTO remain to be seen (in fact, it remains to be seen if the report to Congress will even be made public). Hopefully it will at a minimum encourage further discussion of these issues. My biggest fault with the comments of the 4 group noted herein is not the position they have taken – I expected them to protect their interests and their clients’ interests – but that they believe that no further study or discussion of the issues is needed or worthwhile. Drastic reform may not be necessary. But a few smaller reforms – including better education regarding the issues to both small businesses and trademark owners – could certainly help in minimize the over enforcement of trademarks and the stifling effect it has on the economy, on jobs, and on American innovation.
I could not agree more. In the United States, there is minimal effort devoted toward balancing the rights of rights holders and small businesses. Goods can be seized if a trademark owner determines they are counterfeit. In transit shipments are seized to protect domestic rights holders – even if the small business owner of the cargo, who is located outside of the U.S., had no idea the ship would be stopping here or even passing through. Goods are reportedly detained by virtue of tips or messages from the brand owner, without even the most innocent of traders having any available remedy in the case of false accusations. eBay and others pull auctions or posts if a rights holder tells them to, and trademark registrations —providing substantive, enforceable rights against even innocent third parties —can be obtained even for common shapes of consumer goods, such as cell phones. And, finally, lawsuits requiring expensive, potentially financially-fatal defenses are routinely initiated by parties only interested in destroying any lawful competitor no matter the cost. It is, therefore, unsurprising that these 4 groups believe there is no problem. In their world, there isn’t one.
So the trade associations representing the bullies think no action is needed. What a surprise!