Do large corporations use trade mark law to harass smaller businesses by amplifying the scope of their trademark rights? What happens when a 30 year old small shoe store in my town is threatened to be put shut by a ‘metro’ brand that lands new for the small city crowd and attracts attention? And so, what are ‘trademark bullies’?
Simply put, they are those who bring frivolous, vexatious, bad faith or objectively baseless litigation in respect of a mark, which is an ‘abuse of process’. Unlike malicious prosecution, which involves filing a baseless suit to harass or intimidate an antagonist, abuse of process is the use of the litigation process for an improper purpose, whether or not the claim is colorable. It is the misuse of legal process primarily to accomplish a purpose for which it was not designed, usually to compel the victim to yield on some matter not involved in the suit. And this is almost what happens when ‘Facebook’ sues ‘Techbook’ for using ‘book’; ‘Pillsbury Dough Boy’ sues ‘My Dough Girl’ for attaching another gender with ‘dough’.
When the Trademark Technical and Conforming Amendment Act 2010 was passed more than a year back, it’s Section 4 mandated a study on:
(1) the extent to which smaller businesses may be harmed by litigation the purpose of which
is 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 to protect trademarks and preventing counterfeiting.
The USPTO dutifully prepared and submitted a report in April 2011 with the observation and suggestion that:
“However, to the extent small businesses are disproportionately adversely affected by such tactics because they lack the funds to hire counsel to defend against them, we believe the Federal Government can undertake the following actions:
Engage the private sector about providing fee or low-cost legal advice to small businesses via pro bono programs and intellectual property rights clinics;
Engage the private sector about offering continuing legal education programs focused on trademark policing measures and tactics;
Enhance Federal agency educational outreach programs by identifying resources that enable small businesses to further their understanding of trademark rights, enforcement measures, and available resources for protecting and enforcing trademarks.”
But in the pursuit of picking a bully, what should be the identifying factor? Should it be the size of a business or its conduct that deserves scrutiny? Seems both the U.S. Government and the USPTO have attached the ‘bully’ label only for the larger businesses.
To make the conduct of businesses even and also to check the bullying practice, could the Lanham Act make attorney fee being payable to the prevailing party a mandatory norm instead of it being a bonus or bounty or simply a God-gift on good day when the judge is merciful? For most of the times, it is not the outcome of the legal proceedings that scares the victim, it’s rather the process and putting it the crude way, it’s the money, honey!