TRADEMARK PROTECTION
“I oſten send cease-and-desist letters broadly asking people to change their behaviour in using a trademark. Sometimes I send identical letters to 20, 30 or 50-plus recipients, and some people say ‘thanks for being reasonable’ and that they didn’t think there was an issue and that they will stop.
“Others will report me to the Solicitors Regulation Authority for terrible behaviour in my dealings with small businesses.
“Te concept of what is and isn’t bullying depends very much on the reaction of the recipient,” Bolter continues. “I could put almost anything on my firm’s letter head and people may perceive it as bullying, as it’s a lawyer’s letter.”
Susan Kayser, partner at law firm Jones Day, goes further. She says rights owners feel there is merely a perceived, not a real, problem of bullying.
“Under US law, trademark owners are obliged to enforce their rights or they lose them. Tey must bear the burden of policing any third-party use, and if they believe any use is close to theirs, they are obliged to take action or risk losing their trademark rights,” she says.
“We start with that,” Kayser explains.
“Te vast majority of trademark owners are doing what they’re required to do under the law. Tere are a few bullies, but they are in the minority. I don’t think it really happens that much.”
Trademarkbullying.org doesn’t see it like that. According to the site, bullying has become an “an all too common occurrence” in the US, though it lists just six cases, one involving coffee maker Starbucks, and another chocolate producer Lindt.
USPTO’s report
Due to its subjective nature, pinpointing blatant bullying is very difficult. To shed some light on the apparent problem, the USPTO provided a report to Congress in 2011. Te agency found, aſter a “careful” review, that it is unclear whether small businesses are “disproportionately” harmed by enforcement tactics that are based on an “unreasonable interpretation of the scope of an owner’s rights”.
Te USPTO’s findings were based partly on 79 public comments which, the agency said, reflected a diverse range of views on the subject. But few comments “explicitly” addressed whether, and to what extent, the unreasonable enforcement of trademark rights is a significant problem.
One of the report’s critics,
techdirt.com, described it as “useless” and “biased”. Te site pointed to a blog by Eric Goldman, a professor of law at Santa
12 Trademarks & Brands Online
Clara University School of Law. He wrote that the report took some “ill-fated turns”, including saying that it received a lot of comments but that few of them explicitly addressed the problem.
“It later denigrates those comments as ‘anecdotal’,” says Goldman. “In other words: Problem? We don’t see any problems here! ... Yet, the report doesn’t indicate that the Department of Commerce tried to scientifically research the problem, like conducting a survey to overcome the ‘anecdotal’
defect. Instead, describes its efforts opaquely.”
Singling out bullying online is much easier. ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP), which governs cybersquatting disputes, provides for an offence of reverse domain name hijacking. Tis is when trademark owners bring a complaint in bad faith, for example to harass the domain name registrant holder.
According to
domainarts.com, there was a record number of hijacking cases in 2013—24— compared with 14 in the previous year. Te World Intellectual Property Organization, the leading UDRP provider, handled more than 2,500 cases in 2013, so when you consider 24 against that backdrop, you realise that domain name hijacking is far from frequent.
Volume 3, Issue 1 the report
Although defining trademark bullying and its severity is tough overall, trademark owners can still be scared of being labelled a ‘bully’.
“Bad publicity, especially in the online environment, is obviously a big risk,” says Rob Guthrie, partner at King & Wood Mallesons SJ Berwin.
Kayser adds: “Consumer perception about a brand gives it its value, and you don’t want people thinking ‘this is not a nice brand’. Trademark owners are acutely aware of maintaining their excellent brand value and a positive consumer feeling.”
Te online world, says Kayser, exacerbates the perceived problem of bullying.
“Social media, blogs and the Internet make it possible to highlight what might be a very minor incident or something that might have low frequency of happening, but you can immediately get worldwide attention on that.”
One example of up a protest can be
the Internet’s ability to whip seen on cycling blog
industryoutsider.com. Last year bike company Specialized Bicycle Components sent a cease- and-desist letter to a small Canadian bike shop, Cafe Roubaix, alleging infringement ‘Roubaix’ trademark.
of its
www.worldipreview.com
“THE INTERNET IS THE FUEL THAT DRIVES THIS MACHINE, AND WITHIN HOURS WHAT MAY HAVE BEEN A STRAIGHTFORWARD DEMAND CAN GO VIRAL AND CAUSE A PUBLIC BACKLASH.”
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