5 Things You Need to Fend Off A Trademark Bully*
People like lists. On the internet, it’s a popular and often criticized form of journalism and blogging. There’s even a word for it — “listicle” — a portmanteau of “list” and “article.” Many articles and online resources report on, and try to define, “trademark bullying” but few offer practical tips on how to combat a trademark bully. I wrote this listicle at the risk of oversimplifying what is often a complex, subjective and unpredictable process.
*Consider yourself warned.
Each trademark dispute must be evaluated based on its own set of facts and circumstances. This isn’t meant to be a comprehensive list, just reference point generalizations that typically arise in the context of a U.S. Patent & Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) proceeding (if you want an opinion on a particular matter, consult an attorney). The assumption here is that a weak and/or baseless trademark claim has been made, the complainant refuses to listen to reason and is pressing ahead with litigation. Also, “to fend off” a trademark bully should not be equated with “defeating” a bully … the goal usually isn’t to slay Goliath but to punch back, show him he’s in for a fight and convince the bully it’s in its own best interest to back off.
Here’s what you need:
1. A Willing Defendant
Some defendants do not want to fight – they may not like it, they may be scared, they may develop PTSD, not have the money or it may not be worth it. Sometimes it is worth it. And when it is, just showing up is half the battle. Be ready to defend yourself … and remember, you can quit at any time.
2. Attorney/Client Expense Plan
Depending on your resources you may not have money to spend on legal services – and the bully wants you to spend because it knows it can outspend you. There are many qualified trademark attorneys across the country that can meet a range of budgets and specialties. But make sure your lawyer understands your finances and objectives.
3. Move Proceedings Along
Be prepared to file an Answer to a Complaint and do not suspend proceedings unless a good-faith settlement proposal is on the table. This is a lengthy battle and part of the bully’s game plan is to drag it out (see 2. above) and hope you give up or give in. By filing an Answer you enter your defenses into the record and lock-in prejudice, the bully will then need your consent to withdraw proceedings without it – which leads to:
This is where the bully has to put up or shut up – a bully does not want to have to deal with discovery because it’s worse for them than it will be for you. It will cost money, but you may get it back in the form of leverage. Most bullies include a dilution claim along with likelihood of confusion … let them try to prove fame and dilution (such claims are rarely sustained). It’s their burden of proof and it won’t be easy and it will be expensive. Once discovery closes a bully must re-evaluate its strategy and decide whether to go to trial and risk an unfavorable decision (which may have a huge impact given a recent Supreme Court decision) or take a more sensible settlement position.
If you can get it, use it – use media to shame overreaching plaintiffs and keep unreasonable attorneys in check.