trademark enforcement: analyzing claims, crafting cease...

Trademark Enforcement: Analyzing Claims,

Crafting Cease and Desist Letters,

Monitoring Marks, and More

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WEDNESDAY, MAY 1, 2019

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

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© 2019 Greenberg Traurig, LLP

Anti-Trademark Attorney Sentiment

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© 2019 Greenberg Traurig, LLP 6

More of the Same from Dilbert


Mark Parisi’s Perspective


• Duty to Enforce?

• Equitable Defenses

• “Trademark Bullying”

• Definitions

• Real World Cases

• Practice Tips, Strategies and Best Practices

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Overview


• Often stated that Trademark Owners have “duty” to enforce rights or risk losing rights.

• No such obligation exists in Lanham Act.

• While courts – parroting brand owners – have used this language in decisions, more thoughtful analysis shows that brand owners need only act against use that impairs the distinctiveness of the brand.

• The reality is that it is difficult to establish a Trademark Owners’ failure to enforce and create an estoppel defense.

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Duty to Enforce?


To prevail on an equitable estoppel defense, a defendant must prove:

(1) the plaintiff knew the defendant was selling a potentially infringing product;

(2) the plaintiff's actions or failure to act led the defendant to reasonably believe that the plaintiff did not intend to enforce its trademark right against the defendant;

(3) the defendant did not know that the plaintiff actually objected to the sale of its potentially infringing product; and

(4) due to its reliance on the plaintiff's actions, defendant will be materially prejudiced if the plaintiff is allowed to proceed with its claim.

San Diego Comic Convention v. Dan Farr Prods., Case No.: 14-cv-1865-AJB-JMA, at *4 (S.D. Cal. Aug. 23, 2018)

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Equitable Estoppel


• A party “cannot invoke the doctrine of estoppel on the ground that the plaintiff has knowingly permitted the use and registration of the disputed mark by third parties not in privity with defendant.” U.S. Jaycees v. San Francisco Jr. Chamber of Commerce, 354 F. Supp. 61, 73 (N.D. Cal. 1972)

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Equitable Estoppel is “Personal”


Estoppel by Acquiescence includes the two elements of laches:

(1) plaintiff's unreasonable and inexcusable delay,

(2) inducing the belief that it has abandoned its claim against the alleged infringer — and adds

(3) affirmative conduct inducing the belief that it has abandoned its claim against the infringer, and

(4) detrimental reliance by infringer.

E & J Gallo Winery v. Pasatiempos Gallo, S.A., 905 F. Supp. 1403, 1414 (E.D. Cal. 1994).

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Estoppel by Acquiescence

“Trademark Bullying”


• What are the elements?

• Unfounded claim?

• How unfounded? Where on the continuum between arguable claim and Rule 11?

• Imbalance of resources?

• Large plaintiff exploiting small defendant’s lack of resources to defend?

• Repeated conduct?

• Legitimate enforcement program or evidence of bullying?

• Aggressive litigation or pre-litigation tactics?

• Is an obnoxious demand letter okay if the claim is good?

• If the demand letter is very polite and the claim is unfounded, is it bullying?

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Definition of “Trademark Bullying”

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.

Recent Developments


• 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

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Real World Examples


The $800,000 Joke


• “…maybe [Louis Vuitton] just cannot take a joke.”

• “…. Accordingly, … MOB is entitled to summary judgment on all of Louis Vuitton’s claims …”

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Judge Furman Scolds LV …


• 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”

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… But Does Not Award Fees, For “Several Reasons”


The Big Mcstake


• “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

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Burger King Takes Aim


News Rubs Salt in the Wound


Entrepreneur Magazine: Launching Brands or Chilling Them?


• “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.

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Seth Godin on Trademark Bullying

Practice Tips, Strategies, and Best Practices for Asserting

Rights


• Educate Client Regarding Value of Watch Service and Docketing Deadlines for Watched Marks

• Consider Public-Facing Documentation of Rights

• Create and Publish Statement About Perceived Zone of Protection

• Provide Fair Use Guidelines

• Engaging in Process Will Foster Realistic Evaluation and Provide Guidance When Reality Hits

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Working With Clients Generally


Sample Fair Use Guidelines


• 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 Accordingly

• Demand Letters

• Letters of Protest

• Trademark Oppositions

• Federal Lawsuits

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Enforcement Strategy


Spectrum of Distinctiveness


• 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

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Evaluating Claims


• Source

• Sponsorship

• Affiliation

• Connection

• Approval

Note: Also Protection for the “Least Sophisticated Potential Consumers”

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Types of Actionable Likely Confusion


Sample - Visual Enforcement Target


• 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 even broader protection

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Trademark Dilution (Federal)


• Informal procedure to bring evidence to the attention of the USPTO during registration process

• Likelihood of confusion is an acceptable ground for Letter of Protest:

• No Evidence Required, Other than U.S. Serial Nos. or Registration Nos.

• Name of Protester is Essentially Non-Public, but can be Inferred or Discovered via a FOIA Request

• File Early: “Clear Error” Standard Applies after Publication

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Letters of Protest


• Consider Call Over Letter

• Take Care in Drafting Cease and Desist Letters

• If the letter is 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 every demand a boilerplate demand

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Demand Letters


• Responding to abusive cease-and-desist letters

• Responding to trademark oppositions

• Utilizing social media

• Publicity

• Shaming

• Consider Declaratory Judgment Action

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Responding to Letters


Steve BairdShareholderGreenbergTraurigEmail: [email protected]: 612.259.9718

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Thank you!

Leah Chan GrinvaldSuffolk University Law School

Email: [email protected]

mailto:[email protected]

mailto:[email protected]

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