Trademark Bullying

Trademark bullies are usually large companies over asserting trademark rights against smaller companies forcing them to needlessly switch names.

 

Trademark owners have the right and obligation to enforce their trademark rights against confusingly similar trademarks in related fields. Sometimes, however, trademark owners assert their trademark rights beyond reasonable limits and bully individuals and businesses to change their names. Generally, trademark bullying cases arise when a large company worth millions or billions of dollars go after a small business that do not use a trademark that is too similar or is not in a remotely related field of commerce or even both!

 

The most common occurrence of trademark bullying involve a large corporation sending a cease and desist letter to a small company that threatens legal action if the company does not abandon all use of their alleged confusingly similar trademark. Even if the owner of the small company thinks there is no likelihood of confusion issue and hires a lawyer who tells him they would win the case, small businesses often do not have the time or resources to put up a defense in litigation against multi-billion dollar company. So even if there is actually no legal issue, it may be prudent and cost effective to abandon the trademark and start over in building trademark equity in a new brand.

 

It is also important to point out that just because a large company sends a cease and desist letter to a small company to stop using a trademark does automatically make the large company a trademark bully. In the vast majority of cases, large companies do not want to waste time or resources chasing after small companies that are not causing any trademark confusion issues or are going to cause potential likelihood of confusion issues in the future. Calling any or all good faith trademark enforcement efforts by large companies based on reasonable claims “trademark bullying” diminishes the term completely and hurts the overall conversation surrounding trademark bullying.

 

With the above context, here is a recent example of a clear case of trademark bullying:

Vice Media, worth $2.5 billion tells unsigned indie band ViceVersa that they need to change their name. In December of 2015, Vice Media sent the band a cease and desist letter stating that the ViceVersa band name was “infringing its intellectual property rights,” demanded the band change its name, stop selling any merchandise with the band name on it, and give an accounting of any revenue made over the past four years. Yikes! Imagine being a small up and coming band then being hit with a letter like that! Apparently Vice Media was concerned someone may be looking to find a Vice Media documentary and accidentally buy an indie band named ViceVersa video or something. That poor confused consumer! 

 

When ViceVersa decided to move forward with their band name and trademark application despite Vice Media's cease and desist letter, Vice Media stepped up its bullying tactics. On March 9th, 2016, Vice Media, Inc. filed a trademark opposition against the band's trademark application for ViceVersa alleging the band’s name is likely to cause confusion with Vice Media, Inc. "I thought I was going to a screening of a Vice Media documentary and ended up at a rock show of a band with a similar name" said no consumer ever.

 

Ultimately, after some bad press, Vice Media and ViceVersa settled the trademark issue. Did ViceVersa have to change their name? Nope. According to emails that are public record at the USPTO, Vice Media only wanted them to delete some services out of their trademark application (see below).

After the heavy handed cease and desist letter demanding ViceVersa change their band name, all Vice Media wanted was for them to delete the services struck out in red above from their trademark application.

 

So to recap, after Vice Media asserted that ViceVersa infringed their intellectual property rights, that they needed to change their band name, must stop selling all merchandising with their band name on it, and disclose to Vice Media the revenue the band made over a four year period, Vice Media settled the case because ViceVersa deleted some services from their trademark application (see above). Why didn’t Vice Media just ask them to delete the problematic services from the start rather than go full scorched earth on a small indie band? Because Vice Media is a trademark bully. Kudos to ViceVersa for not backing down.

 

Do you know of any trademark bullying stories? Leave them in the comments below or contact us and I will write a blog about it. Lets hold trademark bullies, such as Vice Media, accountable.

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