Trademark Bullying: Cease and Desist and
Litigation Tactics in the Battle for Brand
Protection
Today’s faculty features:
1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific
The audio portion of the conference may be accessed via the telephone or by using your computer's
speakers. Please refer to the instructions emailed to registrants for additional information. If you
have any questions, please contact Customer Service at 1-800-926-7926 ext. 1.
THURSDAY, JANUARY 16, 2020
Presenting a live 90-minute webinar with interactive Q&A
Stephen R. Baird, Shareholder, Greenberg Traurig, Minneapolis
Leah Chan Grinvald, Associate Dean for Academic Affairs and Professor of Law,
Suffolk University Law School, Boston
Candice E. Kim, Shareholder, Greenberg Traurig, Los Angeles
Tips for Optimal Quality
Sound Quality
If you are listening via your computer speakers, please note that the quality
of your sound will vary depending on the speed and quality of your internet
connection.
If the sound quality is not satisfactory, you may listen via the phone: dial
1-877-447-0294 and enter your Conference ID and PIN when prompted.
Otherwise, please send us a chat or e-mail [email protected] immediately
so we can address the problem.
If you dialed in and have any difficulties during the call, press *0 for assistance.
Viewing Quality
To maximize your screen, press the ‘Full Screen’ symbol located on the bottom
right of the slides. To exit full screen, press the Esc button.
FOR LIVE EVENT ONLY
Continuing Education Credits
In order for us to process your continuing education credit, you must confirm your
participation in this webinar by completing and submitting the Attendance
Affirmation/Evaluation after the webinar.
A link to the Attendance Affirmation/Evaluation will be in the thank you email
that you will receive immediately following the program.
For additional information about continuing education, call us at 1-800-926-7926
ext. 2.
FOR LIVE EVENT ONLY
Program Materials
If you have not printed the conference materials for this program, please
complete the following steps:
• Click on the link to the PDF of the slides for today’s program, which is located
to the right of the slides, just above the Q&A box.
• The PDF will open a separate tab/window. Print the slides by clicking on the
printer icon.
FOR LIVE EVENT ONLY
© 2020 Greenberg Traurig, LLP
Why Anti-Trademark Attorney Sentiment?
5
© 2020 Greenberg Traurig, LLP 6
Some More of the Same from Dilbert
© 2020 Greenberg Traurig, LLP 7
Mark Parisi’s Perspective is Similar Too
© 2020 Greenberg Traurig, LLP 8
How Not to Be an Undead Party Crasher?
Welcome, Trademark Attorneys!
In a world full of uncertainty,
hardship, and people trying to hold us
back, do we need the undead and
trademark attorneys too? Clown
Shoes says, NO, DIE MONSTERS,
DIE! Forces of darkness brought
about a change in the name of this
beer . . .”
“Trademark Bullying”
9
© 2020 Greenberg Traurig, LLP
• What are the most referenced elements of the label?
• Unfounded claim?
• Where on the continuum between arguable claim and Rule 11?
• Imbalance of resources?
• Large plaintiff exploiting small defendant’s lack of resources?
• Repeated questionable conduct?
• Legitimate enforcement program or a pattern of overreaching?
• Aggressive litigation or pre-litigation tactics?
• Is an obnoxious demand letter okay if the claim is solid?
• Can a polite demand letter that is unfounded be bullying?
10
The Meaning Behind “Trademark Bullying”
One Proposed Definition:
“An unfounded trademark claim by a trademark owner exploiting its superior resources and the defendant's relative lack of resources to compel a result that the law does not support.”
11
© 2020 Greenberg Traurig, LLP
• How Did We Arrive at this Unfortunate “Trademark Bullying” Place?
• The Questionable Actions of Some Brand Owners or Lawyers?
• The Questionable Actions of Some Willful or Sloppy Infringers?
• The Media Oversimplifying the Governing Legal Standards?
• The Media’s Misunderstandings of Governing Legal Standards?
• The Emotional Nature of the Age-Old David & Goliath Metaphor?
• The Skepticism and Tension About Big Corporations and Lawyers?
• Those Uninformed Small Business Owners Who Fail to Search?
• The Unwarranted Presumptions of Evil Motives From All Sides?
• Our Part to Improve: Examples, Practice Tips, Strategies, Best Practices
12
How We Got Here, Where Are We Going?
© 2020 Greenberg Traurig, LLP
• Often stated that a trademark owner must police others because of a legal “duty” to enforce its rights or lose them.
• No such formal legal obligation exists in the Lanham Act.
• Courts and some in the media – parroting brand owners –have repeated this legal “duty” language in decisions and articles, a discerning analysis shows consequences, no duty.
• Trademark rights are not like real estate property lines.
• The true scope of trademark rights is tested case by case.
• How realistic is the risk of losing all rights with genericide?
13
Is There a Legal Duty to Enforce?
© 2020 Greenberg Traurig, LLP 14
Once a Trademark, Not Always a Trademark
The Unfortunate Case of Genericide
© 2020 Greenberg Traurig, LLP
• The scope of a brand owner’s trademark rights is not static.
• Trademark rights can grow over time, depending on the brand owner’s new uses, line extensions, and licensing.
• Trademark rights can grow over time through acquisitions.
• Trademark rights can grow over time through eliminating confusingly similar trademarks used in the marketplace.
• Ignoring confusingly similar uses has consequences too.
• Trademark rights are certain to shrink if the Principal Register and similar uses in the marketplace are ignored.
15
The Dynamic Nature of Trademark Rights
© 2020 Greenberg Traurig, LLP
• Likelihood of Confusion
• Strength of the Mark
• Similarity of Marks (Sight, Sound, Meaning)
• Similarity of Goods/Services
• Channels of Trade
• Actual Confusion
• Intent
• Sophistication of Consumers
A Trademark’s Scope of Rights: Evaluating Trademark Targets/Claims
16
© 2020 Greenberg Traurig, LLP
• Parties Typically See Things From Their Own Perspective.
• Trademark Rights are Not like Real Estate Property Lines.
• Decision Makers Balance Complex Multi-Factor Tests.
• Actual Confusion Not Required, Media Misunderstanding?
• Trademark Rights are Dynamic, Owners May Grow Them.
• Trademark Counsel Must Zealously Advocate for Clients.
• Intent is an Emotional Factor, Should it Speak for Itself?
• Confusion is Actionable in More Ways than Simply Source.
17
Likelihood of Confusion is Subjective
© 2020 Greenberg Traurig, LLP
• Source
• Sponsorship
• Affiliation
• Connection
• Approval
Note: Protect the Least Sophisticated Potential Consumers
When Medicine is at Issue, the Risk of Product Confusion and the Resulting Dire Consequences of any Mistakes, Permits a Lesser Showing of Likelihood of Confusion.
18
Types of Actionable Likely Confusion
© 2020 Greenberg Traurig, LLP
• Highly Fact Specific Analysis, Each Case Decided on Record
• Likelihood of Confusion = Probability, Not Mere Possibility
• Appreciable Number of Likely Confused in Relevant Public
• Survey Evidence Showing 11% Confusion, Not De Minimis
• No Competition is Required, if Present, May Help Plaintiff
• When Goods Are Not Competing, How Related Are They?
• How Important is the Bridging the Gap Factor?
• When Can the Accused Defend By Establishing Fair Use?
19
Likelihood of Confusion, Fact Specific
© 2020 Greenberg Traurig, LLP
• For famous marks
• “widely recognized by the general consuming public of the United States”
• no niche fame
• Likelihood of Dilution
• “association arising from the similarity” of the marks that impairs the distinctiveness or tarnishes the famous mark
• No confusion or competition required
• Likelihood of, not actual, dilution
• Defenses
• fair use (descriptive and nominative), comparative advertising, commentary, parody and non-commercial uses
• State statutes provide potentially broader protection
20
Confusion About Trademark Dilution?
© 2020 Greenberg Traurig, LLP
Develop a Brand Protection Strategy
• Select and Clear a Strong, Distinctive Trademark
• Apply to Register the Proposed Mark (ITU)
• Assess the Legitimate Scope of Rights in the Mark
• Design a Reasonable, Defensible Enforcement Strategy
• Self Police to Retain Rights/Strength of Rights in Mark
• Police USPTO and the Commercial Marketplace to Maintain or Grow Scope of Rights in Mark
• Don’t Overlook Letter of Protest as Stealth Activity
21
© 2020 Greenberg Traurig, LLP 22
Big Picture Reasons for Policing and Enforcing Trademarks
• Intellectual Property
• Fulfill Legal Obligation
• Maintain Rights
• Scope of Rights
• Competitive Edge
• Control Reputation
• Protect Consumers
• Collect Money
Valuable Assets
Duty to Licensee
Genericide Risk
Dynamic Rights
Creating Space
Self Interest
Public Interest
Uncommon
© 2020 Greenberg Traurig, LLP 23
Policing and Enforcement Activities
• Boots on the Ground
• Systematic Watches
• Non-Lawyer Efforts
• C&D Correspondence
• TTAB Enforcement
• Court Proceedings
• Domain Enforcement
• Third Party Websites
• Employees, etc.
• Variety of kinds
• Business Angles
• Variety of kinds
• Protect Register
• Injunctions/Money
• Arbitration UDRP
• Terms/Conditions
Recent Developments and Revisiting Some Blasts From
the Not-to-Distant Past
24
© 2020 Greenberg Traurig, LLP
• Is it Bullying?
• What else could it be?
• Legitimate (if aggressive) infringement claim
• Legitimate dilution claim
• A mistake
• Auto-policing, failure to investigate, etc.
• Ambiguous fair use
• How do you determine?
• Tactics to Defend / Settle
25
Real World Examples
© 2020 Greenberg Traurig, LLP 26
Backcountry.com Backs Down to Backlash
© 2020 Greenberg Traurig, LLP 27
What Are the Lessons From This One?
© 2020 Greenberg Traurig, LLP 28
The $800,000 Joke?
© 2020 Greenberg Traurig, LLP
• “…maybe [Louis Vuitton] just cannot take a joke.”
• “…. Accordingly, … MOB is entitled to summary judgment on all of Louis Vuitton’s claims …”
29
Judge Furman Scolds LV …
© 2020 Greenberg Traurig, LLP
• Not a particularly close call, but not so objectively unreasonable that no party could see an opening . . . through which the arguments could be squeezed.
• Trademark Claims require application of fact-intensive, multi-factor analysis
• Difficult to predict success on the merits; subtle analysis
• Room for a range of reasonable assessments
• LV’s arguments not frivolous or mere shakedowns
• Obvious parody does not resolve trademark dilution or infringement
• LV had obtained prior favorable decision (even if flawed / distinguishable)
• LV advanced colorable claims that marks were used to designate LV as source
• Absence of certain evidence does not render a case untenable
• LV’s tactics were within the “metes and bounds of acceptable, if aggressive, litigation tactics” or “not particularly uncommon, even if regrettable”
• Second Circuit in March 2019, affirmed: No Abuse of Discretion to Deny Fees
30
… But Does Not Award Fees, For “Several Reasons”
© 2020 Greenberg Traurig, LLP 31
The Big Mcstake?
© 2020 Greenberg Traurig, LLP
• “McDonald’s just lost its trademark for the Big Mac for suing a much smaller player. … It’s too much fun for us to stay away” – Iwo Zakowski, CEO, Burger King
32
Burger King Takes Aim
© 2020 Greenberg Traurig, LLP 33
News Rubs Salt in the Wound
© 2020 Greenberg Traurig, LLP 34
Entrepreneur Magazine: Launching Brands or Chilling Them?
© 2020 Greenberg Traurig, LLP
• “Stop bullying the entrepreneurs” (March 29, 2019) duetsblog.com
• It seems as though Entrepreneur magazine (who should know better) is working with Latham and Watkins (who should certainly know better) to persist in their relentless efforts to bully entrepreneurs to stop using the word ‘entrepreneur’.
• By engaging in this behavior, Entrepreneur might think it is building a strong trademark; instead, it is throwing away the very purpose of any trademark: To be a symbol of goodwill within a community. Amongst entrepreneurs, it is simply becoming a hated one.
35
Seth Godin on Trademark Bullying
Practice Tips, Strategies, and Best Practices for Asserting
Trademark Rights
36
© 2020 Greenberg Traurig, LLP
• Educate Client Regarding Value of Watch Service and Docketing Deadlines for Watched Marks
• Consider Public-Facing Documentation of Rights
• Publish Statement About Perceived Zone of Protection
• Provide Online Fair Use Guidelines
• Engaging in Process Will Foster Realistic Evaluation and Provide Guidance When Reality Hits
37
Working With Clients Generally
© 2020 Greenberg Traurig, LLP
• Evaluate Enforcement Strategy Based on Client’s Marks
• Registered v. unregistered marks
• Confirm priority and scope of use
• Identify plans for expansion
• Understand distinctiveness: inherent v. acquired
• Consider performing a Strength Analysis
• Evaluate “incontestability”
• Tailor Enforcement Activities Accordingly
• Demand Letters
• Letters of Protest
• Trademark Oppositions
• Federal Lawsuits
38
Formulate an Enforcement Strategy
© 2020 Greenberg Traurig, LLP 39
Sample - Visual Enforcement Guide
© 2020 Greenberg Traurig, LLP
• Consider Whether Call Over Letter Makes More Sense
• Take Care in Drafting Cease and Desist Letters
• If Made Public, Will your Client be Shamed or Praised?
• Don’t Start What you Won’t / Can’t Finish?
• Consider Adjusting Tone based on Client’s PR Desires
• Add Client’s Story to the Letter and Other Facts
• Don’t Make Boilerplate Demands; Tailor Demands Instead
• Rarely Make Accusations of Motive/Intent; Allege Facts
40
Preparing Effective Demand Letters
© 2020 Greenberg Traurig, LLP
• Call Out and Expose Abusive Cease-and-Desist Letters
• Consider Techdirt and Other Vocal Websites
• Responding to Trademark Oppositions
• Utilizing Social Media
• Publicity
• Shaming
• Make Sure to Check for Potential Insurance Coverage
• Consider Declaratory Judgment Action
• Seek Pro Bono Clinic Representation
41
Responding to Demand Letters
© 2020 Greenberg Traurig, LLP 42
Rorschach ≠ Likelihood of Confusion
© 2020 Greenberg Traurig, LLP
• When a Plaintiff has an unreasonable view of likely confusion, especially with design elements, consider this:
• “Setting aside how a relevant consumer would view the design, it looks no more like . . . than it does . . ., or any number of other equally strained possibilities.”
• “With a good imagination, one can pick out a lot of things when confronted with a design element, but a Rorschach exercise is not the test for trademark infringement or confusing similarity.”
• After this, the plaintiff in this example dropped the demand.
43
When Plaintiff Has a Vivid Imagination
© 2020 Greenberg Traurig, LLP 44
© 2020 Greenberg Traurig, LLP
Steve Baird
Shareholder
Greenberg Traurig
Email: [email protected]
Phone: 612.259.9718
45
Thank you!
Leah Chan Grinvald
Suffolk University Law School
Email: [email protected]
Candice Kim
Shareholder
Greenberg Traurig
Email: [email protected]
Phone: 310.586.3867
Top Related