Presenting a live 90-minute webinar with interactive Q&A Trademark Bullying: Emerging Legal Threat Cease & Desist and Litigation Tactics in the Battle for Brand Protection TUES DAY, MARCH 6, 2012 1pm East ern | 12pm Cent ral | 11am Mount ain | 10am Pacific Today’s faculty features: Anne Gundelfinger, Law Office of Anne Gundelfinger , Menlo Park, Calif. Leah Chan Grinvald, Assist ant Professor of Law, Saint Louis University School of Law , S t . Louis S t ephen R. Baird, S hareholder, Winthrop & Weinstine , Minneapolis The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10 .
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“Trademark Bullying” v. Legitimate Trademark Enforcement: Strategies and Best Practices Strafford Publications Webinar March 6, 2012 Anne Gundelfinger Leah Chan Grinvald Stephen R. Baird Principal Assistant Professor of Law Shareholder Law Office of Anne Gundelfinger Saint Louis University School of Law Winthrop & Weinstine Menlo Park St. Louis Minneapolis 650.739.5849 314.977.4241 612.604.6585 info@gundelfingerlaw.com lgrinva1@slu.edu sbaird@winthrop.com 5
Anti-Trademark Attorney Sentiment 6
More of the Same From Dilbert 7
Mark Parisi’s Perspective on Trademark Bullying 8
Overview of Discussion • Definition of “Trademark Bullying” – Various Alternatives • Does the claim have legal merit? – Not a bright line • Real World Examples – Practice Tips, Strategies and Best Practices 9
Definition of a Trademark Bully? Senator Patrick Leahy 2010 • “I am concerned that large corporations are at times abusing the substantial rights Congress has granted them in their intellectual property to the detriment of small businesses,” said Sen. Leahy. “We saw a high-profile case like this in Vermont last year involving a spurious claim against Rock Art Brewery. When a corporation exaggerates the scope of its rights far beyond a reasonable interpretation in an attempt to bully a small business out of the market, that is wrong.” US PTO 2010 Survey • Version 1: “[A] trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.” • Version 2: “…aggressive trademark litigation tactics…” 10
Definition of a Trademark Bully? Most oppositions filed? 11
Definition of a Trademark Bully? • What are the elements? – Unfounded claim? – How unfounded? Where on the continuum between arguable claim and Rule 11? – Imbalance of resources? – Large plaintiff exploiting small defendant’s lack of resources to defend? – Repeated conduct? – Legitimate enforcement program or evidence of bullying? – Aggressive litigation or pre-litigation tactics? – Is an obnoxious demand letter okay if the claim is good? – If the demand letter is very polite and the claim is unfounded, is it bullying? One Proposed Definition: An unfounded trademark claim by a trademark owner exploiting its superior resources and the defendant's relative lack of resources to compel a result that the law does not support. 12
Likelihood of Confusion • Strength of mark • Similarity of marks (sight, sound, meaning) • Similarity of goods/services • Channels of trade • Actual confusion • Intent • Sophistication of consumers 13
Types of Actionable Likely Confusion • Source • Sponsorship • Affiliation • Connection • Approval 14
Spectrum of Distinctiveness 15
Dilution (Federal) • For famous marks • “widely recognized by the general consuming public of the United States” • no niche fame • Likelihood of Dilution • “association arising from the similarity” of the marks that impairs the distinctiveness or tarnishes the famous mark • No confusion or competition required • Likelihood of, not actual, dilution • Defenses • fair use (descriptive and nominative), comparative advertising, commentary, parody and non-commercial uses • State statutes provide even broader protection 16
Real World Examples • Is it Bullying? • What else could it be? • Legitimate (if aggressive) infringement claim • Legitimate dilution claim • A mistake – Auto-policing, failure to investigate, etc. • Ambiguous fair use • How do you determine? • Tactics to Defend / Settle 17
Trademark Bullying? 18
Trademark Bullying? 19
A Trademark Bully? 20
Trademark Bullying? 21
Trademark Bullying? 22
Trademark Bullying? 23
Trademark Bullying? 24
Frito-Lay v. Princeton Vanguard (pending before the TTAB) • Frito-Lay challenging PV registration of PRETZEL CRISPS for “pretzel crackers” (disclaiming “pretzel”) on the grounds that the mark is generic or merely descriptive • Bullying? Does the challenge have merit? • Should the term “pretzel crisp” be available for use by competitors with competing products? • What if PV had brought the same case against Frito-Lay? Bullying? As reported by The New York Times (2/20/12) “This is so different from anything else we’ve faced because we’re not fighting a product in the supermarket, we’re not fighting against an institution like a bank, we’re not dealing with an act of nature,” Mr. Wilson said in an interview at his company’s headquarters here. “This fight is about a big company that wants to dominate the snack food category by crushing a little company like ours rather than by competing with us.” 25
Trademark Bullying? • Chick-fil-A claims there is a likelihood of confusion between “Eat Mor Chikin” and “Eat More Kale.” A cease and desist letter was sent to Bo Muller-Moore, a Vermont folk artist responsible for the “Eat More Kale” slogan, a phrase Bo intends to register as a trademark. • Bo has retained counsel and is fighting a very public “David vs. Goliath” battle, claiming that no one could ever possibly be confused – But the test for infringement is likelihood of confusion, not actual confusion. • Is Chick-fil-A overreaching in its enforcement efforts? "In a vs statement, Chick-fil-A said, ‘We must legally protect and defend our ‘Eat mor chikin’ trademarks in order to maintain rights to the slogan.’" – New York Times (Dec. 4, 2011) – But there is no legal obligation to enforce and the risk of genericide doesn’t seem real. • On the other hand, a fair use defense is belied by trademark use and attempted registration. 26
Trademark Bullying? • Wella Corporation, a/k/a Procter & Gamble, opposed registration of WILLA filed by a new start-up business, Willagirl LLC, based on P&G’s WELLA registrations for related products. – Trademark bullying or legitimate trademark enforcement? P&G has trademark rights to WELLA dating back to the early 1930s and vs. a single vowel differentiates the marks. • Willa took the fight to federal district court and sought suspension of the trademark opposition proceeding before the TTAB – a very smart, but very costly decision. • Wella/Willa trademark dispute recently settled prior to trial – confidential, of course. 27
Practice Tips, Strategies & Best Practices When Asserting Rights • Solid Due Diligence • Realistic Scope of Rights • Assert Realistic Claims • Revisit Enforcement Strategy • Carefully Craft Letters • Engage Business Interests • Weigh Cost/Benefit Analysis • Engage Client’s PR Team • Calm and Persistent Negotiation 28
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