Update on Trademark Bullying Study

June 7, 2011, 8:17 AM

In a post last year, I alerted readers to the United States Patent and Trademark Offices (PTO) solicitation of comments for a study on the problem of trademark bullying, that is, the use of unduly aggressive tactics in trademark disputes by large and well-financed trademark owners. In late April, the PTO issued its findings to Congress and posted the study on its website. To read the entire report, click here.

I read the study as essentially saying that the concern about trademark bullying is much ado about nothing. Others judgments were even harsher: one observer called the report a whitewash while another said it was worthless.

The report provides little detailed analysis of the comments received. It concludes generally that, while many respondents were familiar with instances of bullying, there was little evidence that overreaching was greater than in other areas of law. Explaining the behavior of trademark owners, the PTO reiterated the maxim that trademark owners have an obligation to enforce their rights or face the risk of abandonment, though noting that some may do more than is necessary. It gives some credence to the view that many small businesses lack the legal and financial resources to respond to cease and desist letters and other pre-litigation demands.

The PTOs recommendations are few and tepid. Specifically, it urged: greater efforts by the private bar to provide pro bono assistance to small business, while undertaking outreach efforts to educate small businesses about the nature of trademark rights and steps needed to avoid infringement; and also working with trademark owners and their counsel to develop a better understanding of what steps are and are not necessary in order to preserve the owners rights.

Christopher J. Mugel practices intellectual property law in Kaufman & Canoles Richmond Office. --Christopher J. Mugel