The Metaphorical Trademark "Bully": A Problem?

Does bullying build character? A trademark bully is an entity that enforces a trademark with an overreaching claim--usually using cease and desist letters--against another person or entity with less resources.  However, both the extent of the problem and, assuming it is a problem, what should be done about it. Let's dissect the metaphorical trademark bully (more on metaphor and IP here).

The Infamous Advertisement.
Do you think Louis Vuitton may be sponsoring
or is associated with this event?

Many have tried to answer the question of whether there is a trademark bullying problem--also known as trademark enforcement abuse.  First, there have been anecdotal accounts of trademark holders making overreaching claims against persons or entities with less resources.  In the United States, these claims are particularly troublesome when First Amendment values, such as free speech, are implicated or when fair competition may be threatened.  One of the first trademark "bully" accounts that received substantial attention involved Monster Energy drinks and its enforcement of its trademark against a small brewery offering a beer called, "Vermonster."   However, my favorite trademark "bully" story involves Louis Vuitton who sent a cease and desist letter to the IP student group at University of Pennsylvania Law School directing them to stop using some of Louis Vuitton's trademarks in an advertisement for a law school symposium.  Anecdotal examples abound.

Following these accounts of supposed bullying, several professors and the USPTO attempted to ascertain the extent of trademark bullying.  Professor Kenneth Port's study notes that there is a rise in the number of trademark case filings, but fewer reported decisions.  He posits that trademark extortion (bullying) is the reason for the difference.  He also makes the claim that weak cases are increasing over time based on the number of summary judgment awards to defendants.  Professor William Gallagher's study "supports the thesis that trademarks . . . can be and often are over-enforced in everyday legal practice."  Professor Gallagher interviewed numerous trademark practitioners who stated that they "sometimes enforce admittedly weak IP claims precisely because it can be an effective strategy with few downsides."  

Where there is smoke there is fire, right?

The well-known USPTO Trademark Litigation Study attempted to understand the problem with “trademark bullying.”  The Trademark Litigation Study noted that, “Most of the direct respondents claimed at least some degree of first-hand knowledge of instances where unduly aggressive trademark litigation or pre-litigation tactics (e.g., cease-and-desist letters) were targeted at small businesses.”  However, the Trademark Litigation Study also noted that: 

When asked if they currently encounter the problem of other trademark owners using their trademark rights to harass and intimidated another business beyond what the law might be reasonably interpreted to allow (e.g., is "trademark bullying a problem"), few commenters explicitly addressed whether and to what extent this issue is a significant problem.  Given the limited number of comments and the varied nature of the commenters own experiences, the comments may be better viewed as anecdotal.   

Assuming there is a problem, the question becomes what to do about it.  Some commentators believe shaming is an effective solution.  Because of social media and the Internet, bad actors are often quickly named and condemned.  Brand owners are concerned about their reputations, so counsel have become very conscious of the possibility that they may be perceived as bullies for enforcing their trademarks.  The example of the carefully crafted Jack Daniels cease and desist letter is an excellent example of that care.

Congress didn't legislate?  They must be smokin'!

Perhaps surprisingly, legislatures, including Congress, have not acted to address bullying. This is likely a good thing.  Based on the consumer search costs rationale for trademarks, much of U.S. trademark law is based on reducing the consumer costs in locating goods and services by removing most confusion--trademarks helpfully enable repeat purchasing. Because of the focus on consumer perception, trademark law is necessarily reactive to changes in how consumers perceive and experience trademarks.  In an essay titled, "Trademark Enforcement Issues in the United States: Bullies and Trolls" in 19 No. 5 Journal of Internet Law 26 (behind a paywall), I stated:

"Th[e consumer search cost] theory is generally moored to consumer perception and understanding, which is constantly evolving and reacting to various influences. Indeed, the strength and arguably the corresponding value of a trademark are linked to what consumers think and a valuable mark may completely lose protection because of a change in consumer understanding. In some ways, the existence and scope of trademark protection (and corresponding value) lies in the hands of the trademark owner. Any rational owner of a valuable asset will do whatever it legally can to protect that asset. This includes vigorous enforcement of a trademark to ensure that not only is the mark not weakened and lost, but also that it increases in strength, and preserves the ability to move into related geographic and product markets. Courts examine the usage of a mark or a similar mark by third parties to determine the strength and validity of a mark in numerous cases. The need to enforce a trademark is truly not a bug, but a major feature of our trademark system."

They just won't stop.
(although they did partially win--
highlighting the difficulty with these claims)

Unfortunately, drawing the line between "productive" and "unproductive" enforcement is very difficult.  The boundaries of trademark law are not always clear and difficult judgments are often made based on the values of a particular trademark owner.  One solution could include--ironically-- more early enforcement.  Early enforcement may ensure that new and small entities that may not have a strong grasp of trademark law can change their mark without substantial financial and reputation loss.  To address the access to justice issue with small entities, law school clinics can offer pro bono or low bono trademark services to small entities.  For example, Suffolk University Law School's clinic recently helped a small entity defend a trademark bullying action by Monster Energy. Interestingly, the judicial reactions in the U.S. to the supposed "patent trolls" problem may have led to developments that may stifle trademark bullying activity--such as making it easier to obtain attorney fees and more difficult to get injunctions.

So, do you think there is a trademark bullying problem?  If so, what do we do about it?  Surely, radical change to trademark law--the grease of capitalism--is not the answer, right? And remember, “Bullying builds character like nuclear waste creates superheroes. It's a rare occurrence and often does much more damage than endowment.” Zack W. Van