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
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• 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?
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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.”
• 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?
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.
• 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
• “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
• “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.
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Seth Godin on Trademark Bullying
Practice Tips, Strategies, and Best Practices for Asserting
• 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.