trademark bullying: emerging legal
TRANSCRIPT
Presenting a live 90‐minute webinar with interactive Q&A
Trademark Bullying: Emerging Legal ThreatCease & Desist and Litigation Tactics in the Battle for Brand Protection
T d ’ f l f
1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific
WEDNESDAY, APRIL 6, 2011
Today’s faculty features:
Stephen R. Baird, Shareholder, Winthrop & Weinstine, Minneapolis
Theodore H. Davis, Jr., Partner, Kilpatrick Townsend & Stockton, Atlanta
Leah Chan Grinvald, Assistant Professor of Law, Saint Louis University School of Law, St. Louis
Anne Gundelfinger, Law Office of Anne Gundelfinger, Menlo Park, Calif.
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“Trademark Bullying” v. Legitimate TrademarkLegitimate Trademark
Enforcement: Strategies and Best Practices
Strafford Publications Webinar
April 6, 2011Anne GundelfingerPrincipalLaw Office of Anne GundelfingerMenlo Park650.739.5849i f @ d lfi l
Theodore H. Davis, Jr.PartnerKilpatrick Townsend & StocktonAtlanta404.815.6534Td i @kil t i kt [email protected] [email protected]
Leah Chan GrinvaldAssistant Professor of LawSaint Louis University School of Law
Stephen R. BairdShareholderWinthrop & Weinstine
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Anti-Trademark Attorney Sentiment
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More of the Same From Dilbert
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Overview of Discussion
• What is “Trademark Bullying”?• Senator Leahy’s Perspective• TLTC Act of 2010
• US PTO Survey• INTA, IPO, AIPLA, and ABA-IPL responses• US PTO Report to Congress
• Real World Examples• Practice Tips, Strategies and Best Practices
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Background
• Definition of a “Trademark Bully”:
“[A] trademark owner that uses its trademark[A] trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might bebusiness beyond what the law might be reasonably interpreted to allow.”
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US PTO Survey (1st version)
U.S. Senator Patrick Leahy
“I am concerned that large corporations are at ti b i th b t ti l i ht C htimes abusing the substantial rights Congress has granted them in their intellectual property to the detriment of small businesses ” said Sen Leahydetriment of small businesses, said Sen. Leahy. “We saw a high-profile case like this in Vermont last year involving a spurious claim against Rock Artyear involving a spurious claim against Rock Art Brewery. When a corporation exaggerates the scope of its rights far beyond a reasonable p g yinterpretation in an attempt to bully a small business out of the market, that is wrong.”
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US PTO’s “Trademark Bullying” Survey
• “Trademark bullying” replaced with “aggressive trademark litigation tactics”
• AIPLA Respondsp• INTA Responds• IPO Responds• IPO Responds• ABA-IPL Responds• US PTO’s Report to Congress
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Likelihood of Confusion
• Strength of mark• Similarity of marks (sight,
sound, meaning)• Similarity of goods/services• Channels of trade• Actual confusion• Intent• Sophistication of consumers
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Types of Actionable Likely Confusion
• Source• Sponsorship• AffiliationAffiliation• Connection
A l• Approval
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Spectrum of Distinctiveness
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Dilution (Federal)
• For famous marks “widely recognized by the general consuming public of the United• widely recognized by the general consuming public of the United States”
• no niche fame
Lik lih d f Dil ti• 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 even broader protection
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• State statutes provide even broader protection
Real World Examples
• 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?• How do you determine?• Tactics to Defend / Settle
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Trademark Bullying?
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Trademark Bullying?
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A Trademark Bully?
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Trademark Bullying?
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Trademark Bullying?
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Trademark Bullying?
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Trademark Bullying?
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Practice Tips, Strategies & Best Practices When Asserting Rights
• Solid Due Diligence• Realistic Scope of Rights• Assert Realistic ClaimsAssert Realistic Claims• Revisit Enforcement Strategy
C f ll C ft L tt• Carefully Craft Letters• Engage Business Interests• Weigh Cost/Benefit Analysis• Engage Client’s PR Team
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Engage Client s PR Team• Calm and Persistent Negotiation
Practice Tips, Strategies & Best Practices in Receiving TM Demands
• Solid Due Diligence• Realistic Analysis of Claim• Competent TM CounselCompetent TM Counsel• Best Defense-Good Offense
U A il bl L l T l• Use Available Legal Tools• Right to Use v. Registration• Public Relations Campaign• Social Media Campaign
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Social Media Campaign• Calm and Persistent Negotiation