As a trademark opposition attorney, I have first-hand knowledge of trademark bullying tactics that are designed to outspend and harass small business trademark applicants into abandoning their trademark application. The practice also spills into federal court actions for trademark infringement, cyberquatting, and other related matters.  This phenonemnon is very real.

As part of the Trademark Technical and Conforming Amendment Act of 2010, Congress instructed the United States Patent and Trademark Office to take the unusual step to address this issue by sending out a trademark bullying survey to trademark attorneys, small business owners, and interested parties to determine whether they had been the victims of trademark bullying. The survey invited respondents to share their experiences with trademark litigation tactics, “especially those that may involve an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to trademark owners.”  Solicited examples of trademark litigation bullying tactics included abuses of:

  • trademark cease and desist letters
  • domain name cease and desist letters
  • trademark opposition proceedings
  • trademark cancellation proceedings

and other trademark-related matters that have adversely impacted the respondents, their clients, and/or business.

The resulting Report to Congress, Trademark Litigation Tactics and Federal Government Services to Protect Trademark and Prevent Counterfeiting, included the following highlights:

  • approximately 60% of respondents viewed trademark bullying as a real problem
  • a majority of respondents opined that Congress has a responsibility to discourage or prevent aggressive trademark litigation tactics
  • many respondents encouraged the Trademark Trial and Appeal Board to amend its rules to create and enforce tough sanctions against such behavior in trademark opposition proceedings

The subject of abusive trademark lawyer and litigation tactics subject is worthy of further discussion and commentary as there exist several strategies to combat such actions by deep-pocketed trademark litigants. If you or your company is involved in a trademark opposition or other trademark dispute, it is recommended that you speak with a qualified trademark attorney to determine how to best approach the case in a cost-effective and vigilant manner.