Intellectual Property Law

ABA IP Law Section Surveys Members About Trademark Bullies

By Michael Atkins

Excerpt from the ABA’s “Trademark Misuse Survey”

I’m all for this kind of dialog.

And I’m not knocking the ABA.

But in this context, it feels wasteful. Sen. Patrick Leahy got upset this summer when one of his constituents was publicly mistreated by a trademark bully. So, he got Congress to pass a statute to study the phenomenon of trademark bullies. Thus, the “Trademark Technical and Conforming Amendment Act of 2010” was born. (Previous STL post here.)

The ABA summarized the statute’s mandate: “[T]he Secretary of Commerce, in consultation with the Intellectual Property Enforcement Coordinator, is conducting a study on the extent to which small businesses may be harmed by litigation tactics of trademark owners attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to them.”

Today, the ABA’s IP Law Section circulated a survey that’s apparently intended to help inform the process.

So, it’s asking questions like: “Do you agree that trademark ‘bullies’ are currently a problem?” and “Has your company or your client within the past 5 years ever complied with the demands of a cease and desist letter involving trademark rights, even though your company or your client believed that your company or your client would have prevailed if the parties had litigated?”

Good questions. If only the answers would lead to something.

Here’s my two-word solution that I think would save a lot of bullying: Attorney’s Fees.

That’s what we should be studying. Whether amending the Lanham Act to award attorney’s fees to the prevailing party in all trademark cases — rather than only in “exceptional circumstances” — would reduce overreaching in the trademark world.

I think it would.

Full post as published by Seattle Trademark Lawyer on January 04, 2011 (boomark / email).