Today, the world is filled with so-called “trademark bullies,” large companies that seem to take a perverse pleasure in going after the trademarks of small companies, sometimes because a portion of a mark incorporates a portion of what the competitor feels is theirs but often on specious grounds. In fact, several websites devoted to exposing the most-notorious offenders have cropped on the Internet. Kellogg’s comes in first on most of these lists followed by The Lance Armstrong Foundation, Apple, on-line game developer Zynga and K-2, which makes skis and snowboards. Perhaps befitting a company that is attracting so much negative news these days, often Facebook is ranked at No. 8.
The sad reality is that trademarks held by smaller businesses are targeted frequently by larger competitors to discourage aggressive marketing and stymie their growth and not because there is any true infringement. Too often the tactic works because the targeted business lacks the resources or will to fight back – not unlike The Simpson’spoor little Ralphie Wiggims when he is picked on by perpetual bully Nelson Muntz.
But sometimes a company refuses to buckle under. As a trademark litigation attorney, I have represented a number of start-ups and small companies that were victimized by trademark bullies. In almost every case, the marks were nowhere close to being confusingly similar.
I was retained recently by a cosmetics firm concerned about a competitor owned by a reality TV star. Concerned that its trademark was close to being similar to that of our client, it was determined to fight. We were asked to investigate the supposed infringer’s trademark portfolio.
Fighting possible trademark infringement means playing tough, not dirty, and calls for a trademark litigation attorney to take an aggressive stance by exploiting flaws and weaknesses in how the other side registered its trademarks. At the same time, we claimed that the viability of the plaintiff’s trademarks were faulty and aggressively pursued depositions of the company’s senior management and celebrity owner.
In the end, it takes a nuanced understanding of trademark law to prevail when defending against actions brought by a bully or fighting a potential infringer. But in the background lies what most of the executives at a company want: A favorable settlement of the case that causes the infringer to turn tail and walk or run away, which is what happened when our client refused to be cowed.
Sometimes, it is necessary to play very tough in a trademark dispute in order to beat off a competitor that insists on playing dirty.
By Marcus Harris