trademark bullying: cease and desist and litigation...

Trademark Bullying: Cease and Desist and

Litigation Tactics in the Battle for Brand

Protection

Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

The audio portion of the conference may be accessed via the telephone or by using your computer's

speakers. Please refer to the instructions emailed to registrants for additional information. If you

have any questions, please contact Customer Service at 1-800-926-7926 ext. 1.

THURSDAY, JANUARY 16, 2020

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

Candice E. Kim, Shareholder, Greenberg Traurig, Los Angeles

Tips for Optimal Quality

Sound Quality

If you are listening via your computer speakers, please note that the quality

of your sound will vary depending on the speed and quality of your internet

connection.

If the sound quality is not satisfactory, you may listen via the phone: dial

1-877-447-0294 and enter your Conference ID and PIN when prompted.

Otherwise, please send us a chat or e-mail [email protected] immediately

so we can address the problem.

If you dialed in and have any difficulties during the call, press *0 for assistance.

Viewing Quality

To maximize your screen, press the ‘Full Screen’ symbol located on the bottom

right of the slides. To exit full screen, press the Esc button.

FOR LIVE EVENT ONLY

Continuing Education Credits

In order for us to process your continuing education credit, you must confirm your

participation in this webinar by completing and submitting the Attendance

Affirmation/Evaluation after the webinar.

A link to the Attendance Affirmation/Evaluation will be in the thank you email

that you will receive immediately following the program.

For additional information about continuing education, call us at 1-800-926-7926

ext. 2.

FOR LIVE EVENT ONLY

Program Materials

If you have not printed the conference materials for this program, please

complete the following steps:

• Click on the link to the PDF of the slides for today’s program, which is located

to the right of the slides, just above the Q&A box.

• The PDF will open a separate tab/window. Print the slides by clicking on the

printer icon.

FOR LIVE EVENT ONLY

© 2020 Greenberg Traurig, LLP

Why Anti-Trademark Attorney Sentiment?

5

© 2020 Greenberg Traurig, LLP 6

Some More of the Same from Dilbert


Mark Parisi’s Perspective is Similar Too


How Not to Be an Undead Party Crasher?

Welcome, Trademark Attorneys!

In a world full of uncertainty,

hardship, and people trying to hold us

back, do we need the undead and

trademark attorneys too? Clown

Shoes says, NO, DIE MONSTERS,

DIE! Forces of darkness brought

about a change in the name of this

beer . . .”

“Trademark Bullying”

9


• What are the most referenced elements of the label?

• Unfounded claim?

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

• Imbalance of resources?

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

• Repeated questionable conduct?

• Legitimate enforcement program or a pattern of overreaching?

• Aggressive litigation or pre-litigation tactics?

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

• Can a polite demand letter that is unfounded be bullying?

10

The Meaning Behind “Trademark Bullying”

One 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.”

11


• How Did We Arrive at this Unfortunate “Trademark Bullying” Place?

• The Questionable Actions of Some Brand Owners or Lawyers?

• The Questionable Actions of Some Willful or Sloppy Infringers?

• The Media Oversimplifying the Governing Legal Standards?

• The Media’s Misunderstandings of Governing Legal Standards?

• The Emotional Nature of the Age-Old David & Goliath Metaphor?

• The Skepticism and Tension About Big Corporations and Lawyers?

• Those Uninformed Small Business Owners Who Fail to Search?

• The Unwarranted Presumptions of Evil Motives From All Sides?

• Our Part to Improve: Examples, Practice Tips, Strategies, Best Practices

12

How We Got Here, Where Are We Going?


• Often stated that a trademark owner must police others because of a legal “duty” to enforce its rights or lose them.

• No such formal legal obligation exists in the Lanham Act.

• Courts and some in the media – parroting brand owners –have repeated this legal “duty” language in decisions and articles, a discerning analysis shows consequences, no duty.

• Trademark rights are not like real estate property lines.

• The true scope of trademark rights is tested case by case.

• How realistic is the risk of losing all rights with genericide?

13

Is There a Legal Duty to Enforce?


Once a Trademark, Not Always a Trademark

The Unfortunate Case of Genericide


• The scope of a brand owner’s trademark rights is not static.

• Trademark rights can grow over time, depending on the brand owner’s new uses, line extensions, and licensing.

• Trademark rights can grow over time through acquisitions.

• Trademark rights can grow over time through eliminating confusingly similar trademarks used in the marketplace.

• Ignoring confusingly similar uses has consequences too.

• Trademark rights are certain to shrink if the Principal Register and similar uses in the marketplace are ignored.

15

The Dynamic Nature of Trademark Rights


• 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

A Trademark’s Scope of Rights: Evaluating Trademark Targets/Claims

16


• Parties Typically See Things From Their Own Perspective.

• Trademark Rights are Not like Real Estate Property Lines.

• Decision Makers Balance Complex Multi-Factor Tests.

• Actual Confusion Not Required, Media Misunderstanding?

• Trademark Rights are Dynamic, Owners May Grow Them.

• Trademark Counsel Must Zealously Advocate for Clients.

• Intent is an Emotional Factor, Should it Speak for Itself?

• Confusion is Actionable in More Ways than Simply Source.

17

Likelihood of Confusion is Subjective


• Source

• Sponsorship

• Affiliation

• Connection

• Approval

Note: Protect the Least Sophisticated Potential Consumers

When Medicine is at Issue, the Risk of Product Confusion and the Resulting Dire Consequences of any Mistakes, Permits a Lesser Showing of Likelihood of Confusion.

18

Types of Actionable Likely Confusion


• Highly Fact Specific Analysis, Each Case Decided on Record

• Likelihood of Confusion = Probability, Not Mere Possibility

• Appreciable Number of Likely Confused in Relevant Public

• Survey Evidence Showing 11% Confusion, Not De Minimis

• No Competition is Required, if Present, May Help Plaintiff

• When Goods Are Not Competing, How Related Are They?

• How Important is the Bridging the Gap Factor?

• When Can the Accused Defend By Establishing Fair Use?

19

Likelihood of Confusion, Fact Specific


• 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 potentially broader protection

20

Confusion About Trademark Dilution?


Develop a Brand Protection Strategy

• Select and Clear a Strong, Distinctive Trademark

• Apply to Register the Proposed Mark (ITU)

• Assess the Legitimate Scope of Rights in the Mark

• Design a Reasonable, Defensible Enforcement Strategy

• Self Police to Retain Rights/Strength of Rights in Mark

• Police USPTO and the Commercial Marketplace to Maintain or Grow Scope of Rights in Mark

• Don’t Overlook Letter of Protest as Stealth Activity

21


Big Picture Reasons for Policing and Enforcing Trademarks

• Intellectual Property

• Fulfill Legal Obligation

• Maintain Rights

• Scope of Rights

• Competitive Edge

• Control Reputation

• Protect Consumers

• Collect Money

Valuable Assets

Duty to Licensee

Genericide Risk

Dynamic Rights

Creating Space

Self Interest

Public Interest

Uncommon


Policing and Enforcement Activities

• Boots on the Ground

• Systematic Watches

• Non-Lawyer Efforts

• C&D Correspondence

• TTAB Enforcement

• Court Proceedings

• Domain Enforcement

• Third Party Websites

• Employees, etc.

• Variety of kinds

• Business Angles

• Variety of kinds

• Protect Register

• Injunctions/Money

• Arbitration UDRP

• Terms/Conditions

Recent Developments and Revisiting Some Blasts From

the Not-to-Distant Past

24


• 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

25

Real World Examples


Backcountry.com Backs Down to Backlash


What Are the Lessons From This One?


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 …”

29

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”

• Second Circuit in March 2019, affirmed: No Abuse of Discretion to Deny Fees

30

… 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

32

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.

35

Seth Godin on Trademark Bullying

Practice Tips, Strategies, and Best Practices for Asserting

Trademark Rights

36


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

• Consider Public-Facing Documentation of Rights

• Publish Statement About Perceived Zone of Protection

• Provide Online Fair Use Guidelines

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

37

Working With Clients Generally


• 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 Activities Accordingly

• Demand Letters

• Letters of Protest

• Trademark Oppositions

• Federal Lawsuits

38

Formulate an Enforcement Strategy


Sample - Visual Enforcement Guide


• Consider Whether Call Over Letter Makes More Sense

• Take Care in Drafting Cease and Desist Letters

• If 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 Boilerplate Demands; Tailor Demands Instead

• Rarely Make Accusations of Motive/Intent; Allege Facts

40

Preparing Effective Demand Letters


• Call Out and Expose Abusive Cease-and-Desist Letters

• Consider Techdirt and Other Vocal Websites

• Responding to Trademark Oppositions

• Utilizing Social Media

• Publicity

• Shaming

• Make Sure to Check for Potential Insurance Coverage

• Consider Declaratory Judgment Action

• Seek Pro Bono Clinic Representation

41

Responding to Demand Letters


Rorschach ≠ Likelihood of Confusion


• When a Plaintiff has an unreasonable view of likely confusion, especially with design elements, consider this:

• “Setting aside how a relevant consumer would view the design, it looks no more like . . . than it does . . ., or any number of other equally strained possibilities.”

• “With a good imagination, one can pick out a lot of things when confronted with a design element, but a Rorschach exercise is not the test for trademark infringement or confusing similarity.”

• After this, the plaintiff in this example dropped the demand.

43

When Plaintiff Has a Vivid Imagination


Steve Baird

Shareholder

Greenberg Traurig

Email: [email protected]

Phone: 612.259.9718

45

Thank you!

Leah Chan Grinvald

Suffolk University Law School


Candice Kim

Shareholder

Greenberg Traurig


Phone: 310.586.3867

mailto:[email protected]



trademark bullying: cease and desist and litigation...

Documents