TRADEMARK PROTECTION


discussion. Brand owners usually want to resolve disputes quickly and cheaply. An initial letter can be fairly assertive but, if you engage, trademark owners will normally be reasonably receptive to negotiating and resolving the situation.”


Cards on the table


Education is perhaps the best way of getting to the root of the problem—perceived or real— of trademark bullying. First, as the USPTO study pointed out, this means educating small companies.


Says Kayser: “We need to be realistic: the smaller companies feel like they are being bullied ... and they have fewer resources, so they might put their resources into something and not realise that it is infringing another party’s rights who are now naturally bigger.


“I think the USPTO said ‘let’s focus resources on educating small businesses and provide information so they can understand ... and help them to become a big player in the right way’.”


Second, and perhaps more importantly, trademark owners need to educate the public.


Aſter the news broke, industryoutsider.com’s founder ‘Brian’ claimed Specialized was “already feeling the backlash” on cycling forums, news outlets and even its own Facebook page for asserting its rights. “On the forums I run,” Brian adds, “there is even talk of cyclists putting up the money for a legal defence”.


Putting the merits of this or any trademark


dispute aside, the reaction is telling: people group together to oppose what they believe is bullying. Te 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.


In response, trademark owners need to embrace social media, if they haven’t already, says Kayser.


“Trademark owners need to be on the ground— have apps, Facebook pages or something like that where you can directly communicate your message to the public in a way that the public wants that information.”


In 2013, Canonical, the maker of the Ubuntu operating system, used its Google+ page to apologise for being a “bit silly” for asserting its rights against fixubuntu.com, a website that shows Ubuntu users how to disable a default feature in Ubuntu. On the Google+ page, Canonical founder Mark Shuttleworth said the company’s


www.worldipreview.com


trademark guidelines specifically allow satire and critique (‘sucks’) sites, and that “we should at most” have asked the site’s owner to state that the use of the logo was subject to those guidelines.


Aside from publicity concerns, there may be legal risks attached to bullying. In the UK, companies that feel they are being bullied can file a claim for unjustified threats. Guthrie explains that someone could claim that a cease-and-desist letter is unjustified and, in theory at least, could obtain damages, though in practice, “it’s relatively rare.”


Bolter adds: “I have been threatened with them a couple of times but have never been on the receiving end of one. It’s a piece of legislation that is abused: some use it for a strategic reason, and that is so you can go aſter the solicitors who sent the cease-and-desist letter, rather than the brand owner, which, in my view, is totally unprofessional.”


Instead of bullies, small companies might


taking legal action against alleged feel that


a


discussion with the trademark owner is the best option to resolve a dispute.


“It’s very important to take legal advice early on,” Guthrie says. “Sometimes my clients have strong


claims


“Tere is a big concern that trademark owners are these big bad companies,” says Kayser. “Te perfect example is the backlash against the Stop Online Piracy Act (SOPA)."


SOPA aimed to reduce online IP infringement, incorporating measures such as seeking US injunctions against foreign websites that profit from piracy and counterfeiting. But the bill met a severe online backlash, even prompting a 24-hour ‘blackout’ from Wikipedia in January 2012, and was later shelved.


Kayser continues: “Something I am concerned about is that we might need not just education for small and medium-sized businesses but we need to do a lot of education with the public to address a negative perception out there.”


Education and discussion could go a long way to diluting what is a strong and evocative term. Even with official definitions, the perception of bullying can vary widely. For that reason, and because protests against legitimate trademark complaints can go viral, trademark owners need to engage with everyone from Internet users to small businesses to avoid a public relations nightmare.


against small companies and


they put their heads in the sand. Te advice I give is to get legal advice and try to engage in a


As the Jack Daniel’s example shows, brand owners don’t need to be too forthright when they target alleged infringers. As Jack Daniel’s also shows, asserting your trademark rights can be welcomed, respected and lauded. 


Trademarks & Brands Online Volume 3, Issue 1 13


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