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The PTO Isn't Passing the Buck in Addressing Trademark Bullying After All

At first I found this a little annoying.

The U.S. Patent and Trademark Office has announced a public meeting to discuss the feasibility of “intellectual property associations providing continuing legal education programs focusing on trademark policing measures and tactics.”

The discussion is in response to the Trademark Technical and Conforming Amendment Act of 2010, which, among other things, required the Department of Commerce to report to Congress about trademark bullying. The PTO did so (STL post here), and one of its recommendations was to “engage the private sector regarding continuing legal education programs focused on trademark policing measures and tactics.”

In other words, the PTO’s solution is to see what bar associations can do to address the problem. Sure sounds like it’s passing the buck.

But after further thought, I agree that bar associations and intellectual property industry groups are in a good position to address this problem. That’s because it largely lies with a few misinformed lawyers — lawyers who apparently tell their client they need to send cease-and-desist letters to every conceivable trademark infringer, threaten litigation, and follow up that threat by filing suit if the ostensible infringer doesn’t back down. It’s this senseless over-reaching mentality that needs to be corrected, and the PTO’s got the right idea. It should start with educating the lawyers who give that advice.

In reality, most trademark attorneys know they can pick-and-choose their battles. There’s no doctrine that says a trademark owner forfeits its trademark rights if it doesn’t wage a scorched-earth campaign against anyone and and everyone who could possibly infringe its mark. That fact should be obvious, since the test for trademark infringement is “likelihood of confusion” (i.e., a probability that consumers would be confused), not the “possibility of confusion.”

Most lawyers get this. The overwhelming majority. But there are a few who clearly don’t. They’re the ones who need to be educated, and a good way to reach them is through IP bar associations and industry groups.

For those in the vicinity of Washington, D.C., the PTO’s discussion will take place from 2-3 p.m. on Nov. 29 in the 10th Floor atrium conference room (10D31) of the Madison West building on the PTO’s Alexandria, Va., campus. The PTO asks those planning to attend to email their names to TMFeedback@uspto.gov no later than Nov. 25 with the subject line “public meeting.”

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