define: Trademark Trolling

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

John Locke

define: Trademark Trolling

Trademark trolling means using one’s trademark registration to limit competition. Here’s the technical definition of trademark trolling:

The United States Patent and Trademark Office (“USPTO”) defined the amorphous term Trademark Bullying or Trademark Trolling as the vexatious practice of a “trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.” 

Source: IP Watchdog

 It happens in every industry: big brand sues little brand for “IP infringement” over the use of a similar name, even though the average consumer would not be confused.

But it’s not always a big brand. Trademark trolls come in every “size” of business. See my Stealth post for one glaring example. See Dr. Roberts’ article for a peek at why they are so successful. 

Not all frivolous trademark owners are trademark trolls. Some are simply uninformed folks following bad advice to protect their assets. More on that another time.

Trademark trolls can be split into two categories: those that use legitimate trademarks, and those that use frivolous trademarks. 

Rules of the Game (IP for Newbies)

You have to learn the rules of the game. And then, you have to play better than anyone else.

Albert Einstein

To clean up the frivolous trademark mess at Amazon and Etsy, we need to start with a basic understanding: 

Trademark is for Brands, Copyright is for Designs 

Trademark is for brands, for example:

  • Ann Arbor T-shirt Co.
  • Disney
  • Southern Attitude
  • Star Wars
  • Under Armour

Each of the above brands offers unique selling propositions (USP) to attract loyal customers: 

  • Ann Arbor T-shirt Co. — employee models, special inks, Michigan artists
  • Disney — entertaining customers via media and amusement parks
  • Southern Attitude — celebrating Southern pride
  • Star Wars — media empire built on successful movie series, toys, decor, etc.
  • Under Armour — influencer marketing partnerships, sports camps, fitness app, inspiring ads

Trademark protects consumers from getting counterfeit products, thus protecting a brand’s reputation and value. 

Suppose products from Brand X (a hypothetical, high-end clothing company) are being copied and sold at a lower price by a knock-off supplier who slaps the “Brand X” logo onto their cheaply made products. The US trademark system recognizes:

  • Brand X may invest millions of dollars in marketing campaigns to build brand loyalty and trust; 
  • A purchaser whose counterfeit Brand X shirt falls apart after one washing may conclude product quality is not a priority with the Brand X company, devaluing the brand; 
  • If Brand X has registered BRAND X as a trademark, they can pursue legal action against the knock-off supplier to force the removal of these counterfeit products from the marketplace.

Copyright works the same way, except that instead of protecting a brand, it protects original creative works. Think paintings, songs, plays, books, etc. 

Simple, right? Trademark and copyright are wonderful inventions when used properly. But greedy or fearful people often abuse the system to “protect” their turf and chill competition. 

The “Trademarks” section of my blog focuses on trademark abuse in the print-on-demand industry via twin bandits: frivolous trademarks and trademark trolls.

Messy Diapers: Why I Fight Frivolous Trademarks

Ever seen a toddler who actually wants to wear a messy diaper? As Dave Ramsey describes them, “Yeah, I know it’s messy, but it’s mine and it’s warm.”

Too many Merch and Etsy sellers are just like that toddler. 

See, there are twin, growing “messes” in the print-on-demand industry (POD): 

  • trademark trolling or overreach 
  • frivolous trademarks

We’ve heard about frivolous trademarks and how they are harming the industry. We know there’s a mess, and it’s getting bigger. But we want to play online doing fun stuff a couple of hours a day and watch all that passive income roll in. If things get messy around us someone else can clean it up.

Act as if what you do makes a difference. It does.

William James

It’s time for Merch and Etsy sellers to own the mess caused by frivolous trademarks. Building a real business comes with real responsibilities. 

I don’t say that harshly. I had my own “head in the sand” attitude for the first six months or so that I heard about this problem: 

  • I’m too busy. Don’t you know how hard I’m working on my FBA business? 
  • I’ve barely had any Merch sales anyway — I’m a newbie, a nobody. No skin off my nose.
  • This only affects the big-time sellers. 
  • Don’t get me wrong — I’ll do my due diligence! I won’t infringe on someone else’s trademark! But there’s nothing I can do to stop them… or is there?

Finally, in February 2018, I saw Ken Reil “beating this drum” again. Ken’s presentation at a Merch workshop months earlier had helped me. For the first time, I saw this as an issue that affected someone who mattered, if only because they’d helped me. So when Ken announced his discovery of USPTO’s Letter of Protest system, I jumped into research mode.

I started on this journey to help Ken, and I continue it today to “pay it forward” in gratefulness to the many members of the Merch, Amazon, and Etsy communities who have helped me in my entrepreneur journey. Let’s clean up the mess!

Fighting Frivolous Trademarks Groups

Alone, we can do so little; together, we can do so much.

Helen Keller

About a year into my “fighting frivolous trademarks” journey, I left the group I’d joined to avoid any appearance of favoritism. But that doesn’t mean I’m against groups! It only means that, as one who hopes to work directly with USPTO to improve the system, I dare not take sides in seller community controversies over what is or isn’t a frivolous trademark, or what should or shouldn’t be protested. 

I’ve had many conversations with the same Attorney Advisor at USPTO — a helpful, knowledgeable, gracious man I’ll call “Joe” here to protect his privacy. One point Joe has often reiterated is this: USPTO welcomes Letters of Protest because their goal is to issue quality registrations and Letters of Protest are very helpful in that process. The only caveat is, they don’t want multiple protests for the same application. That just creates extra work, and bogs down the system.

So, in addition to this website, I strongly recommend you join one of the “Frivolous Trademarks” Facebook groups, for three reasons: 

1. It gives you a way to coordinate Letter of Protest efforts to avoid multiple protests being filed against the same application (more than five is considered spam by USPTO and will be disregarded); 

2. It gives you a place to ask questions as you analyze whether an application should be protested (in case you’re having a hard time applying my “LOP Triage” tips to the situation); and, 

3. It gives you a place to be encouraged and to encourage others in the fight against frivolous trademarks. 

Here are the groups I’m aware of. Join any or all of these communities to make a difference!

Trademark Watch Dawgs – Stop Frivolous Trademarks, 9.7k members

Metal Stampers Against Frivolous Trademarks, 92 members

Makers Against Frivolous Trademarks, 108 likes (this was an active group last year, try sending them a message if you’re interested in joining)

Link: Search the Trademark Official Gazette

Here’s the link to search the Trademark Official Gazette. Use it to find frivolous trademark applications that have been recently published for opposition. (Note that if the publication date is over 30 days ago, it’s too late to file a Letter of Protest.)

Here are the boxes I check on the left sidebar when using this:

Select Issues: choose dates up to 30 days ago.
Reason for Publication: Opposition
Class Numbers: Leave Blank. If there are too many results, select “International Class” and check only the classes that concern you most:

  • 06 – Metal Goods
  • 09 – PopSockets
  • 14 – Jewelry
  • 16 – Paper Goods
  • 18 – Leather Goods
  • 20 – Furniture & Articles Not Otherwise Classified
  • 21 – Housewares & Glass Products
  • 24 – Fabrics & Textiles
  • 35 – Advertising & Business (Online Store)
  • 40 – Custom Imprinting
  • 42 – Custom Design of Apparel

Leave the other options blank. If you want to pare it down to the most likely problem areas, scroll down to the Basis option and select “Intent to Use” (this is the biggest loophole exploited by trademark trolls).

It’s a good idea to monitor this at least every other week to catch marks that may hinder your business. However, it’s far better to catch them early in the process. I’ll show you how to search and review new applications in a separate post.

Stealth Troll:

Here’s a sickening tale of how one “IP entrepreneur” shamelessly used his “stealth” trademark as a cash cow until the Seventh Circuit Court stopped him.

In a nutshell, the owner of the STEALTH trademark sued anyone under the sun for the rights to use the term on their products, even though his 33 registrations were unsupported (no solid proof of actual sales). In the end, the court canceled the mark in question. Score one for freedom!

Excerpts:

[Third parties,] when threatened with litigation… entered into licensing or settlement agreements for use of the STEALTH mark. These agreements cover a startling collection of products, ranging from “hand tools to make prosthetic limbs to construction consulting services to track lighting.”

It was reported that [the trademark owner] even accused Sony Pictures of infringing the STEALTH mark by including the word as the title of a film featuring Navy pilots.

Not only did the Seventh Circuit approve of the district courts decision to cancel the plaintiff’s mark, the court stated that “where . . . a registrant’s asserted rights to a mark are shown to be invalid, cancellation is not merely appropriate, it is the best course.”

Consumers, trademark owners, and competition all directly benefit by vigilant enforcement of the use in commerce requirement.

Marks that have been registered for less than five years may be cancelled “for any reason which would have been sufficient to deny registration in the first instance.”62…

[A mark] may always be challenged on the grounds that it has been abandoned regardless of how long a mark has been registered.64

The TTAB has jurisdiction over four types of inter partes proceedings: oppositions, cancellations, interferences, and concurrent use proceedings.76 Cancellation proceedings may be initiated by any person who believes that they are or will be damaged by a registered mark.77 An inter partes proceedings before the TTAB is similar to district court proceedings in that there are pleadings, motions, discovery and brief filing.78 They differ, however, because the TTAB is an administrative tribunal and thus, proceedings are conducted solely in writing.79 A party to a proceedings may never even come before the board, by way of giving witness testimony or otherwise, unless a party requests oral hearing on the matter.80

[Where] one doubts the validity of a registration it is always the better course to petition to cancel the mark rather than adopting a “wait and see” approach.83

Unlike inter partes procedures before the TTAB, cancellation of a trademark cannot be the only basis of a plaintiff’s suit.93 The Seventh Circuit has held that federal courts do not have jurisdiction to hear a claim for cancellation brought by a plaintiff without a current registration.94

As noted above, although the plaintiff claimed to be either the registrant or assignee of “33 federally registered STEALTH or STEALTH formative marks,” only two were conceivably relevant to this suit.116 This is due to the likelihood of confusion requirement: only the use of a mark that is likely to cause consumer confusion is actionable.117

If there were a commercial use spectrum, Central Manufacturing would be at the bottom of the evidentiary standard of proof. In characterizing the plaintiff’s proof as “unsupported assertions” and “unauthenticated evidence of small amounts of sales,” the court held the plaintiff failed to prove ownership rights to the STEALTH mark.128 The most obvious problem was the lack of invoices and receipts characteristic of actual business transactions between the plaintiff and consumers or businesses.129 However, to support his claim of ownership the plaintiff attempted to admit the following documentary evidence: advertising material and charts of “sales” activity.130 The court rejected this evidence as unsubstantiated, unbelievable or both.

Page 474:

the court stated the law was clear that “mere advertising and documentary use of a notion apart from the goods do not constitute technical trademark use.131

(See p.475 and following re: evidence of commercial use standards.)

Page 478:

After assessing the parties’ respective arguments, the district court granted the defendant’s motion for summary judgment.160 In granting the defendant’s motion, the court also took two steps seemingly outside of the norm of trademark litigation: the court ordered the plaintiff to pay the defendant’s attorneys’ fees and costs and ordered the cancellation of the plaintiff’s 249’ registration.161

Read the full article at the Chicago-Kent College of Law here.

The author of the paper is Anna B. Folgers.