Policing Trademark Rights and the Problem Posed By Bullying

Overly aggressive enforcement of trademark rights by high-profile brand owners can lead to consumer backlash when such enforcement is perceived as “trademark bullying” of the “little guy.” Such enforcement efforts have grown increasingly hazardous during the era of Internet blogging and social networking. These mediums have given individuals and small businesses a very tall “soapbox” from which to voice their complaints.

Even in the Digital Age, trademark owners must continue to consider the merits of their cases. However, exclusive focus on the merits of one's case (i.e., whether the claim asserted is at least colorable) invites the possibly grave detrimental result of being branded a “trademark bully.” Therefore, in addition to confirming that its claim is at least colorable, a trademark owner should consider the scope and magnitude of the infringing and/or diluting behavior at issue. It should then assess how serious the infringing/diluting behavior is in terms of potential brand damage. Finally, it should consider the identity of the target of the use at issue in terms of celebrity, pre-existing connections to the blogosphere and to the world of social networking, and the target's ability to mount an unconventional defense by garnering sympathy and turning the public's sentiment against the trademark owner. This final consideration becomes especially important where arguable parody and/or “tongue in cheek” uses are involved. Before exploring these practical tips further, it is useful to consider a few recent examples of trademark bullying that have drawn unwanted attention to the trademark owner.