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How to avoid being a trademark bully

Bullying is a “very buzzy term” in trademarks at the moment, revealed Bryce Coughlin of Fox Entertainment Group in the U.S. during yesterday’s session Taking it Too Far: When Pretexts and Bullying Create Ethical Dilemmas.

The USPTO defines 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.” Jyotin Hamid of Debevoise & Plimpton in the U.S. said options for responding to a trademark bully include declaratory judgment, consumer protections law and public shaming through a PR campaign. If the trademark bully actually sues then the options become Rule 11 sanctions, seeking attorneys’ fees under the Lanham Act, or counterclaims such as abuse of process. Hamid noted success under the Lanham Act was unlikely and that Rule 11 was a better bet.

From the trademark owner’s point of view, Coughlin outlined some practical concerns when a company is looking to protect its brand.  “I am very careful to think about the long-term impact,” he said. For example, if a company is aggressive about its arguments that a company in a completely different industry could cause confusion this could be used against it by another company later trying to prove trademark infringement.

Another tip was to consider expectations about the ultimate outcome and plan accordingly. Coughlin urged companies to think about what they actually want, and whether an action is worth it: “That can help you avoid getting into hot water ­ethically and overreaching.”

Another tip Coughlin gave was: “Think outside the box—non-legal remedies often work best.” This could be as simple as providing some free merchandise or providing some free tickets to a showing as a gesture of goodwill. “Being nice can help,” he said. “It shows that there is a human on the other end.”

It can also be important how contact is made. “Think about first contact not coming from a lawyer or an outside firm,” said Coughlin. “Sending a letter from outside counsel is often read as a serious message about how you view the case. That may not help you get the outcome you want and you could end up in court sooner than you wanted or maybe you didn’t want to be in court at all.” The session, moderated by Ken Taylor of Marksmen in the U.S., also discussed case law and best practice tips for pre-texting.

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