The U.S. Patent and Trademark Office (PTO) has asked for input from small businesses who believe they have been victimized by trademark “bullies”. Since every individual domainer and the vast majority of the commercial entities serving domain investors and developers are small businesses, this is an open invitation for domain industry participants to share their stories with the government in the hope of providing a basis for meaningful reform that curbs abusive practices. It’s not often that the government actually asks folks to relate abuse and suggest ways to deal with it, so this is an opportunity that should not be neglected by domainers who have been on the receiving end of over-the-top trademark owner practices.
The main focus of the request is on abusive litigation tactics, and for domainers that would generally be restricted to the few cases brought under the Anticybersquatting Consumer Protection Act (ACPA) in the U.S. But there is also a question regarding receipt of cease-and-desist (C&D) letters — and of course that is a situation that many domainers have experienced, generally as a prelude to a threatened UDRP filing. Complaints about the UDRP process are outside the scope of the inquiry, as UDRP proceedings occur outside the U.S. Court system – but since UDRP arbitrations are often the middle stage between a C&D and an appeal under the ACPA, they are certainly part of the overall strategy of trademark owners who overstate their rights. Finally, while the PTO notice asks if trademark “bullies” are a problem for trademark owners, that wouldn’t preclude submitting data that indicates they are a problem for domain registrants as well.
The deadline for submitting comments is January 7, 2011 and ICA plans to file a statement. We encourage all domainers who have stories to tell to submit their own comment letters (note that you do not have to identify yourself if you don’t wish to) and to share your letters with us. We also welcome input from domainers that will help form the basis of the ICA’s comment — even if you are not an ICA member. In all cases we will respect requests to protect identity.
All correspondence that you wish to direct to or share with ICA should be directed to ICA Counsel Philip Corwin at pcorwin@butera-andrews.com. In particular, we welcome your thoughts on what the PTO, the courts, or other agencies can do to curb abusive trademark litigation tactics.
The full text of the PTO notice is below – we have highlighted those sections of greatest relevance to domain portfolio owners.
http://www.uspto.gov/trademarks/bullies_survey.jsp
The Trademark Technical and Conforming Amendment Act of 2010 became effective on March 17, 2010. Pub. L. No. 111-146, 124 Stat. 66 (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 “(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 the rights granted to the trademark owner; and (2) the best use of Federal Government services to protect trademarks and prevent counterfeiting.” Trademark Technical and Conforming Amendment Act § 4. The study and report shall also include any policy recommendations deemed appropriate.
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.
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[1] A trademark “bully” could be described 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.