By Tracy Stewart DeMarco and James Paul Williamson
The United States Patent and Trademark Office ("USPTO") recently issued a request for comments concerning perceived overreaching trademark litigation tactics that may harm small businesses. The USPTO promulgated this request as part of a study mandated in the recent Trademark Technical and Conforming Amendment Act of 2010 ("the Act"). In addition to conducting the study, the Act required the Secretary of Commerce to report and make policy recommendations to the House and Senate Judiciary Committees within one year of the law's passage regarding: "(1) the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of rights granted to the trademark owner; and (2) the best use of Federal Government services to protect trademarks and prevent counterfeiting."
In its request for comments, the USPTO is seeking feedback from trademark owners and practitioners regarding the first issue posed by the Act: alleged corporate use of "bullying" tactics to enforce trademark rights "beyond a reasonable interpretation" of actual rights and any resulting harm to small businesses. The survey questions are targeted to elicit, among other things, anecdotal evidence regarding whether small businesses often agree to cease use or abandon their trademarks in the face of a cease-and-desist letter or potentially costly oppositions or lawsuits initiated by corporations. In addition, the survey requests information regarding instances where trademark plaintiffs withdrew demands, or where a court or the Trademark Trial and Appeal Board ("TTAB") imposed sanctions and/or assessed attorneys' fees against a plaintiff.
The USPTO offers a definition of a "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." Though consistent with the Act's mandate, this definition is vague and subject to wide interpretation. Of particular concern, there is no guidance on or recognition of the difficult balance between enforcement actions that may overextend the rights of a trademark owner and those that are believed to be necessary policing efforts, essential to preserving a trademark owner's rights and investments.
Because the Act's directive mandates that results of the study be presented to the House and Senate Judiciary Committees, this survey could have an impact on the future trademark enforcement landscape and its friendliness (or lack thereof) toward trademark owners (large or small) seeking to protect their marks. Accordingly, Fulbright encourages its clients with trademark assets or those with an interest in trademark enforcement to take the time to respond to and comment on this survey. The USPTO will consider responses that address any portion of the listed questions in addition to any further comments. A complete list of the survey questions is posted below and can also be found online at http://www.uspto.gov/trademarks/bullies_survey.jsp. Responses should be sent to TMFeedback@uspto.gov no later than January 7, 2011.
This article was prepared by Tracy Stewart DeMarco (firstname.lastname@example.org or 202 662 4653) and J. Paul Williamson (email@example.com or 202 662 4545) from Fulbright's Intellectual Property and Technology Practice Group. For additional information, please contact Tracy Stewart DeMarco or J. Paul Williamson.
 Pub. L. No. 111-146, 124 Stat. 66 (2010).
Complete List of Survey Questions
J. Paul Williamson joined the Washington, D.C., office of the international law firm of Fulbright & Jaworski L.L.P. as a partner in 2003. His practice focuses on Intellectual Property and Technology matters.
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