Trademark Bullying – are you being bullied?
What is trademark bullying?
Bullying, in general, means an act of intimidating a weaker person to do or not to do something. This term is quite familiar to most of us, especially in the context of school, colleges, workplaces, etc. Bullying seems to be an epidemic and has invaded the trademark industry as well. Normally, well-informed clients and/or attorneys do not engage in this behavior.
Trademark bullying, in our own words, means a form of threat, instigation, or communication initiated by, in most cases, a registered trademark owner against others who generally may not be registered owners, to do or to stop doing something that is, without any reasonable cause, likely to or is infringing the trademark of registered trademark owner. This includes but not limited to sending notices, making phone calls, emails and other forms of communications in an attempt to threaten and or persuade others to do or not to do something that is by unreasonable assumption likely to or to cause infringement.
In other words, trademark bullying is when fairly large companies, corporations unfairly or illegitimately threaten small companies with legal action for purported trademark infringement. In most cases, small companies are unable to afford to defend their cause and drop their use of the trademark in question.
This seems to be a challenge in foreign countries and USPTO has specifically been working with stakeholders, law firms and congress to keep this in check. In fact, USPTO has been collecting surveys from stakeholders in this regard.
Trademark bullying remains a tough nut to crack – both in terms of definitions (more on efforts to achieve this in the upcoming issue of WTR) and solutions to the (for some perceived) problem. Yet it is a critical issue to address – as long as the trademark community remains split, it will be hard to meaningfully address public perceptions on perceived brand overreach. While consensus still seems some way off, the positive is that it is at least an issue on which practitioners are (usually) prepared to make their stance known – the starting point of any productive dialogue.
This is slowly catching up in India and some companies are actively engaged in sending notices to small businesses and threatening them with legal action.
Some Notable Trademark Bullying Cases
a) Jenzabar Case
In a most recent case in United States, Massachusetts Court directed the plaintiff Jenzabar to pay $500,000 in attorney fees over the unrelenting attack on the defendants who are documentary filmmakers. Jenazabar, plaintiff, filed a law suit against the documentary filmmakers and subsequently lost the lawsuit, but only after engaging in extensive and costly discovery and depositions, then appealed on a ridiculous and obsolete theory. They then lost the appeal. And, now a court has thankfully ordered Jenzabar to pay $511,943.12 in attorneys’ fees and expenses for pursuing such frivolous legal strategies, clearly designed to silence free speech, rather than for any legitimate trademark purpose. The court is pretty clear on this in slamming the company for its efforts and awarding such a large amount.
b) The Monster Energy vs Vermonster
Monster Vs. Vermonster – Classic case of trademark bullying
Image source: http://www.energyfiend.com/poll-monster-energy-vs-vermonster-beer
Eventually the court dismissed the case as
a) There was a clearcut difference between both the marks a) monster energy b) vermonster
b) One was a energy drink and another one was a beer.
What to do when someone bullies you? Contact a qualified trademark lawyer.
All infringement notices cannot be termed as trademark bullying or threats. Ideally, when you receive a notice from a lawyer or a company notifying you of any infringement and asking you to do or refrain from doing something, it is in your best interest to get in touch with a trademark lawyer/attorney who has seasoned knowledge and experience in trademark litigation and let your lawyer handle the same.
Do not get wrong advises from friends, nonqualified persons, or jump into a conclusion that you are not infringing and decide to ignore the notice. Ignoring an infringement notice which has valid grounds may land you in trouble, as, at the least, they can get a restraint order against you from a competent court and claim damages (compensation) for your act, which can easily be avoided if handled before the case is lodged.
If your trademark attorney feels it is a mere threat, at most, a well-drafted counter-reply would be more than suffice. However, if they still want to pursue further and take things to the court, your lawyer can defend you and get the case dismissed with costs.