Government Misses Opportunity to Discourage Trademark Bullying

A few months ago, the U.S. Patent and Trademark Office issued the results of a study on trademark bullies. The study was mandated under a provision of a Senate bill—The Trademark Law Technical and Conforming Amendment Act of 2010—which required the Secretary of Commerce to conduct a study to examine the extent to which smaller businesses may be harmed by larger companies that attempt to enforce their trademark rights “beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.”

Would that be something like the recent legal action in which Kellogg’s sued the Maya Archaeology Initiative claiming that the MAI’s toucan logo infringes Kellogg’s Toucan Sam character and games? A recent Forbes article contains a side-by-side comparison of the marks so you can judge for yourself. Is it fair to assume that Kellogg’s just might be exaggerating its trademark rights to suggest that the public will confuse a nonprofit organization’s concerns with Mayan culture with Froot Loops® because one uses a realistic toucan bird and the other a cartoon toucan character?

Sadly, the USPTO whiffed at its opportunity to seriously address very real issues facing trademark owners concerned with both enforcing and defending their trademark rights, and perhaps discouraging legal actions such as this.

Balancing the reported incidences of bullying with equally valid concerns expressed about the pressures on trademark owners to police their marks or risk the loss of rights, the report essentially concluded that it is unclear if there is a problem with trademark bullies. But then, acknowledging that small businesses might be disproportionately harmed by the financial inability to defend against the overreaching tactics of some trademark owners, it suggested that the federal government could help by promoting pro bono legal assistance, encouraging continuing legal education programs on trademark policing practices, and enhancing educational outreach programs to educate small businesses about protecting and enforcing their trademark rights.

Unfortunately, these uninspired recommendations do little to discourage the act of bullying. Telling the little guy to avoid the corner where the bully hangs out, or to get a friend to reason with the bully on his behalf—or duke it out if necessary—doesn’t address the problem of the bully. What about considering measures that would support good policing practices focused on the quality of enforcement efforts, rather than the quantity of attacks? Maybe make it easier for a successful trademark defender to recover the costs and fees of its defense where the claims of infringement are unreasonable?

Perhaps if the USPTO had taken a stronger position with respect to bullying tactics, Kellogg’s would have thought twice about its action against the Maya Archaeology Initiative. Kellogg’s unsuccessful history with similar claims against such defendants as Toucan Golf Inc, a manufacturer of promotional golf equipment, and a steel drum band, The Toucans, has apparently taught them nothing about what constitutes reasonable trademark enforcement.