The US trademark office has opened up a comment period and wants feedback on Trademark Bullying:
We all know of cases where trademark owners have tried to use their trademark to get domains that are well beyond their trademarks and/or use scare tactics and other questionable practices in attempting to get domains away from their owners.
Here are the details including information on how you can get your opinion heard on this very important issue to domain holders:
“”The Trademark Technical and Conforming Amendment Act of 2010 became effective on March 17, 2010.
“The Act includes a provision that the Secretary of Commerce, in consultation with the Intellectual Property Enforcement Coordinator, shall conduct a study and report to the Committees on the Judiciary of the House and Senate on:
““ 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 the rights granted to the trademark owner”
“In connection with the study, the USPTO is requesting feedback from U.S. trademark owners, practitioners, and others regarding their experiences with litigation tactics, especially those involving an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner. ”
“The USPTO also is eliciting suggestions to address any allegedly problematic litigation tactics.”
“Please send your response to the following questions, or any additional comments, to TMFeedback@uspto.gov, with the subject line “Small Business Study.”
“In order to ensure that your feedback may be considered, please submit it no later than January 7, 2011.”
“Although the USPTO would find it most beneficial to receive responses to every item, you may answer all or any portion of the following questions.”
1. Please identify whether you are a trademark owner or practitioner, and the general size and nature of your business or trademark practice, including the number of trademark applications and registrations your business has, or your practice handles. Please note that the USPTO will fully consider any comments you submit, even if you choose not to identify yourself in a particular manner.
2. In approximately the last 5 years, please describe any instances of which you have first-hand knowledge where a small business may have been the target of litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.
3. 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.
4. Please describe situations where you have been involved in trademark litigation in state or federal courts. Anecdotal information might include, but is not limited to, a description of whether the lawsuit settled on the basis of the small business agreeing to cease its use of one or more marks, or on the basis of the plaintiff withdrawing or abandoning its trademark-related allegation(s). Alternatively, relevant information might include whether such lawsuits resulted in a court judgment and the nature of the judgment (such as requiring the small business to cease its use of one or more marks, assessing monetary liability (damages, lost profits, or attorneys’ fees) against the small business, requiring the plaintiff to pay the defendant’s attorneys’ fees, or imposing sanctions against the plaintiff under Rule 11 of the Federal Rules of Civil Procedure).
5. Please describe situations where you have been involved in opposition/cancellation proceedings instituted at the USPTO against small business owners. Anecdotal information might include, but is not limited to, a description of whether the proceedings settled on the basis of the small business agreeing to abandon its application(s) for one or more marks, or whether the proceedings settled on the basis of the plaintiff withdrawing or abandoning its notice of opposition or cancellation petition. Alternatively, relevant information might include a description of whether such proceedings resulted in a decision by the USPTO Trademark Trial and Appeal Board (“TTAB”) refusing to register/canceling one or more marks owned by the small business, or whether such proceedings resulted in the TTAB imposing sanctions against the plaintiff under Rule 11 of the Federal Rules of Civil Procedure.
6. Do you think trademark “bullies”[1] are currently a problem for trademark owners, and if so, how significant is the problem?
7. Do you think aggressive litigation tactics are more pervasive in the trademark area than in other areas of the law?
8. Do you think the USPTO has a responsibility to do something to discourage or prevent trademark bullying? If yes, what should the USPTO do?
9. Do you think the U.S. courts have a responsibility to do something to discourage trademark bullies? If yes, what should the U.S. courts do?
10. What other U.S. agencies may have a responsibility to do something about the problem?
11. Do you think Congress has a responsibility to do something to discourage or prevent trademark bullying? If yes, what should Congress do?
12. Please provide any other comments you may have.””
Slate says
LOL….
One of the more funny threads I have seen yet.
But in all seriousness, this could actually be beneficial to everyone if we take the time and let out voices be heard. Well… if the government actually hears us is a different story.
Cheers
UDRPtalk says
Ironically, I guess you can say Google is being bullied by CollegeNet over Google’s recent “SpeedBook” TM filing.
Landon White says
MAJOR, MAJOR NEWS!
Hard to believe they are TRULY concerned…
BUT…. IF THEY ARE?…
8. Do you think the USPTO has a responsibility to do something to discourage or prevent trademark bullying? If yes, what should the USPTO do?
11. Do you think Congress has a responsibility to do something to discourage or prevent trademark bullying? If yes, what should Congress do?
I have set a EMAIL contact for this if you need help,
(or care to network with others to see this does not get diluted
or swept under the rug )
And all the rest of the good stuff…
GREAT NEWS FOR DOMAINERS….
send me a email:
eMail us:
……………… bullyban@yahoo.com
Dean says
Here,
I will save space by addressing the topic of Future Domain “Trademark Bullying” by addressing both ICANN and the US Trademark Office in the same post.
x to .xxx (NO TO .XXX)
Landon White says
NO: to – “XXX” = Administrative Bullying
NO: to – “Domain Blocking Bill” = Political Bullying
NO: to – “Trademark Bullying” = Corporate Bullying
………………………………DID I MISS ANY?
enum says
i was wondering if this would ever be mentioned here yet.
+1 for covering it.
this is not necessarily something to laugh at.
one question i hope they will address in their analysis is: of the reported cases of “bullying” what percentage involve the internet?
maybe something like: if there is a growing trend toward more bullying than is “usual”, can it be related to trends in advertising media (e.g. shift from print to digital)?
while we may be hesistant to say this is directly related to “domaining”, it may be that is exactly what’s behind it. i don’t know… have they looked at this issue in the past?
i do know that no one knows better than domainers the true extent of the games that some large corporations are playing with the internet, away from public scrutiny, including their use of trademark registrations as a “sword” (cf. “shield” against competitors).
i hope serious domainers will submit comments. they have the historical data to show what some of these corporations are doing, and the sheer hilarity of it when coupled with the litigation that makes headlines.
Stephen Douglas_Successclick.com says
This is the best domain blog article posted this year.
EVERY DOMAIN INVESTOR, whether you have 1 – 1 million domains, needs to follow up and answer this govt TM query.
I’m sure ICANN will be crossing their fingers that we don’t. Just think if the USPTO actually ran their own “TM Fairness” board to review the cases first for a $99 fee. Their decision would be final and legal. Appeals would cost $2500 for the TM holder, but only $299 for the Respondent. A frivolous case would be fined $10,000 if a four person panel found gross “bullying” by the TM holder.
Ahh… to dream…
Good job Em-Bee. I’m taking part in this.