Trademark System Bias

Welcome to a series about the threat and impact of questionable trademarks.
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Trademark System Bias, Part 02: Definitions

Frivolous trademark? Troll? Bully? In this post, you’ll learn some important definitions.

define: Frivolous Trademark

“Frivolous Trademark” is a term oft-used in the print-on-demand industry. (I first heard it from Ken Reil, founder of Trademark Watch Dawgs.) It’s a reflection of the language used by attorneys and courts to describe litigation designed to harass the defendant: frivolous lawsuit.

Such lawsuits are often filed even when “the plaintiff knows that there is little or no chance of the lawsuit succeeding if pursued in court.” So why file it? Because the defendant will often cave to the plaintiff’s unreasonable demands rather than fight an expensive legal battle.

There are two kinds of questionable trademarks in my At the Beach poem: “trademark shields” and “trademark swords.” Each is defined by the way it is used by the owner:

  • Trademark “Shields” are for “protection” of an idea (an unprotectable asset).
  • Trademark “Swords” reduce competition via licensing fees and lawsuits when trademark rights are enforced.

In other words, “shields” are questionable trademarks gotten for self-defense, while “swords” are for unfair competition.

Sources of Questionable Trademarks

Similarly, there are four main sources of questionable trademarks:

  • trademark trolls
  • trademark bullies
  • victimized competitors
  • misguided creatives

I’ll cover the first three here, and misguided creatives in Part Five of this series.

I have always thought the actions of men the best interpreters of their thoughts.

John Locke

define: Trademark Troll

Trademark abuse is nothing new. USPTO defined the term “trademark troll” 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.”

Trademark trolls exist in every industry. The Stealth troll gives a glimpse into how trolls may operate on a grand scale.

In contrast, trolls in the print-on-demand industry are usually content to own the market for certain words displayed on novelty goods. Trolls register expressions solely for the purpose of licensing a term or phrase for decorative use on products.

The earliest example of this might be the Life Guard trademark in 1938. (My personal opinion, based on the facts laid out in the linked blog post.)

define: Trademark Bully

Trademark bullies often have at least one legitimate trademark which becomes frivolous because of the way that they use it.

They’re not interested in licensing agreements. They want a virtual monopoly of their “brand”. Rather than licensing their mark to others, they are constantly searching for business and product names that “might be confused” with their brand, no matter how remote the association, no matter how different the product category (“Class” in trademark law language).

Bullies threaten with lawsuits if competitors refuse to “cease and desist” from using a name they claim will cause “likelihood of confusion.” Their frivolous lawsuits are without merit, yet most competitors don’t have the resources to take them on.

Examples of Trademark Bullies

Here are some examples:

  • NFL (Super Bowl – see this brilliant article by Ron Coleman at Likelihood of Confusion)
  • Under Armour (who, the Portland Mercury pointed out, sues any brand that includes “armor” or “armour” or “armory” in the name)
  • Brooks Brothers (the Star Tribune reported on the failed attempt of this men’s clothing giant to bully a home-based therapeutic soaps company)
  • McDonald’s (CNBC reported the trademark battle loss when they tried using their “Big Mac” trademark to force Irish restaurant “Supermac’s” to rebrand)
  • Life is Good (T-shirt company who sued LG electronics over their Life’s Good reverse-acronym tagline)

Smaller bullies follow in the footsteps of these big brands. Creatives share horror stories of cease-and-desist letters (“C&D”) from trademark owners that reflect a complete ignorance of the extent of protection trademarks offer.

In one case, the owner pointed to the registration of his (insert-single-common-word-here) restaurant trademark as proof the word could not be used in its ordinary sense as part of a T-shirt slogan. In another, the owner claimed his legit brand registration (along the lines of “Red Rock Glass Co.”) meant his company was the sole legal source of a common, 5-word novelty expression.

define: Victimized Competitors

Not all questionable trademarks belong to trademark trolls and bullies. Increasingly, ineligible applications are filed by victimized competitors. The goal of “Fearful Frank” is only to avoid harassment.

Many creatives register questionable trademarks as a way to pre-empt the IP infringement claims, cease and desist orders, and licensing agreements that have hampered their businesses and stolen their profits.

Widespread past errors by USPTO have created pressure within the industry to be the first to register the latest trending expression. This guarantees the seller can continue selling products instead of being forced out of the market by a trademark bully.

This is Part 2 of a 12-part series about the threat and impact of questionable trademarks. The next post is Part 3. Or see below for a complete list: