Magazine article Information Today

Trolls in the World of Trademarks

Magazine article Information Today

Trolls in the World of Trademarks

Article excerpt

Of the three major intellectual property areas--copyright, patent, and trademark--trademark has by far the longest history. It dates back to the earliest days of commerce and property ownership, as growers, craftsmen, and traders would mark their products in some way to identify both ownership and that they were the source of that product. As competition for goods and services grew, the marks also grew in importance in connecting the particular product or service with a particular craftsman or trader.

We now call it branding, and it has taken on a whole new level of importance as commerce and trade have become global and instantaneous. Companies go to considerable lengths--and expense--to protect their brands. My research class explored a trademark and copyright lawsuit filed a number of years ago by Mattel over an artist's use of Barbie dolls in his work. Mattel lost the suit and likely spent tens or hundreds of thousands of dollars on the case. However, students felt that it was a reasonable investment by Mattel in support of its brand by demonstrating its willingness to defend the brand from real or perceived misuse.

APPLE, COKE, OR BARBIE

Under our current trademark laws, a business or company gets legal protection for its brand when the consumer is able to associate a specific product with the specific business or company. Whether it's an APPLE computer, a COCA-COLA soft drink, or a BARBIE doll (it is common to capitalize a specific trademark to distinguish it from the underlying product), consumers of those products know exactly what they are getting and base their decision to purchase on their expectation that the product will be the same Apple, Coke, or Barbie they expect.

Trademark owners can and usually do take the additional step of registering their marks with the U.S. Patent and Trademark Office (USPTO; uspto.gov). Registering provides another level of legal protection and clearly affirms the priority of an established or "senior" trademark owner over a later-arriving or "junior" owner. The trademark owner is required to list the product category that its brand is operating in, such as computers, beverages, or toys.

GLOBAL TRADEMARKS

Trademark registration is also territorial, so global trademark owners are often compelled to register their trademarks in jurisdictions worldwide to ensure global protection. Trademark registrations can be rejected if the words are already in use or are too generic to be identified with a particular brand of the product, such as a trademark for WATER for a particular brand of bottled water named Water.

As with patents and copyrights, the last 20-30 years have seen a huge increase in trademark registrations with the USPTO, which has given rise to another 21st-century intellectual property phenomenon, the trademark troll. Like the more widely known patent trolls, trademark trolls are focused primarily on gaining income or eliminating competition through threats of infringement lawsuits and other trademark challenges.

OPPORTUNISTIC TROLLS

Trademark trolls seem to operate under one or more of several separate models. The first is described as opportunistic trademark trolling. This model seeks to register particular words or phrases, particularly pop culture words or phrases, and a broad category of products, often including apparel (T-shirts, etc.), trinket-type items--essentially anything that might be sold as a licensed product. The troll then seeks out uses of those words or phrases (typically through internet shopping searches) and targets the seller with an infringement claim and a demand for a license. …

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