Little data supports bullying and existing safeguards solve

The study, which was conducted by the USPTO, analyzed current trademark enforcement as well as the impact of such enforcement on the marketplace. It evaluated the scope of trademark rights and litigation. As for trademark bullying at the pre-litigation stage, it found that empirical evidence was lacking and solicited public comment to determine its impact. It sought feedback from trademark owners and practitioners “regarding their experience with litigation tactics, especially those involving an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the owner’s rights.”18 One prompt used by the USPTO in soliciting comment included the following:

Please describe situations where you have been involved in receiving a cease-and-desist letter. Anecdotal information might include, but is not limited to, a description of whether the letter resulted in the small business ceasing its use of one or more marks, or whether the sender of the cease-and-desist letter withdrew or abandoned its demands against the small business owner.19

This prompt was clearly meant to determine the impact of trademark bullying at the demand letter stage. Comments were received from several stakeholders groups such as the International Trademark Association (INTA), the American Intellectual Property Law Association (AIPLA), and the Intellectual Property Owner’s Association (IPO).20

For its part, INTA responded that regulation was not the answer and that education would be a better solution. It deemed the remedies available at law for overly aggressive assertions of trademark rights as sufficient, and cited the availability of sanctions, attorney’s fees, declaratory judgments, and reprimands from state bars. Further, it regarded cease and desist letters as important tools—whether overly aggressive or not—to enable parties to enter into a negotiation or alternative dispute resolution, thereby preventing the burden of litigation for either party.

The AIPLA largely echoed the sentiments of INTA. It pointed out how existing trademark law does not merely permit mark owners to be aggressive, it requires them to be. It cited Judge Leval’s discussion regarding Procter & Gamble after it lost a trademark suit. “Procter & Gamble cannot be faulted for zealously protecting [its] trademark interest. Indeed, the trademark law not only encourages but requires one to be vigilant on pain of losing exclusive rights.”21 AIPLA also discussed the notion that small businesses have the David & Goliath angle on their side, which enables them to rally public support in their favor and publicly shame a large, overly aggressive mark owner. If effective, this strategy would be available at even the demand letter stage.