Although there seems to be less publicity recently about trademark bullies, that does not mean they have gone away. Trademark bullying is alive and well, and the Associated Press recently published an article pointing the finder at universities as the newest members to this disfavored group. A few examples the article highlighted are:
- Duke University opposed the registration of DUKE’S FOLLY for “wine” and “custom production of wine for others; providing information about wine-making”;
- North Carolina State University objected to the use of WOLFPACK – the nickname for its sports teams – by a convenience store in Raleigh, NC called Wolfpack Mini Mart, and a California brewery’s use of Wolfpack to promote its wolf themed beers; and
- Texas A&M University objected to Erik Nolte’s plans to produce a beer called the 12TH CAN.
The United States Patent and Trademark Office once defined a “trademark bully” as “a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.” Despite this definition, most people believe a trademark bully is any large company that is picking on a smaller company, but this is not always the case. And while most “trademark bullies” do not have a specific intent to harass the other party, they do have an intention to intimidate their opponent.
The problem with bullies is that they cause their opponent to unnecessarily spend money and sometimes money they don’t have. Here are some characteristics to be on the lookout for to avoid a party that is likely a trademark bully:
- Does the person or party own numerous trademark registrations for the same mark?
- Do those marks exist in a crowded field?
- Does the correspondent information at the USPTO for the trademark owner’s marks identify a solo practitioner, small firm, or large firm with a reputation for aggressive litigation tactics? A common problem in the trademark bully area are lawyers that do not have a deep understanding of the likelihood of confusion factors.
- Has the trademark owner been involved in several proceedings before the Trademark Trial and Appeal Board?