A client of mine recently received an email from someone saying that since the 1990s, he had been using the same trademark she’s using now, so she should stop using it.
The two trademarks were not exactly the same, but they were very similar, and for related goods and services. However, I wouldn’t recommend my client change her brand just because someone says, “I got there first.” There is more to it than that.
For one thing, he didn’t even say that he had commenced use in the ‘90s. He said that the company was founded by two other people, and we don’t know whether they transferred the rights or specifically assigned the trademark to him or his company.
Besides establishing whether he even had the right to make a claim, the purported trademark owner would have to show that he had been continuously using the trademark—engaging in interstate commerce (in the US)—before our client. The earliest and continuous use is what establishes superiority under federal trademark law. With the Internet, we could easily do a search and see that there was no recent evidence of his use of the trademark. The would-be claimant would need to provide proof—not just testimonials, but documents—of his use.
Notably, the individual was not an attorney. While one does not have to be an attorney to send a demand letter, retaining an attorney lends credibility to the claim. The informal way this stranger chose to make his demand made it hard to take him seriously.
Trademark Trolls
Like the troll in the Three Billy Goats Gruff story, we encounter “trolls” claiming to have intellectual property rights that they think entitle them to exclusive use of the mark—to throw the would-be defendant off the bridge, as it were. They tend to come in the form of someone with a registration or a particular line of goods and services, who overreaches and wants to control any use of a similar-sounding trademark for any goods.
There’s nothing wrong with enforcing the trademarks and copyrights of others, but the troll’s business model seems to be bullying based on questionable rights. They harass people into making small settlements, with very little factual support behind the threat. These would-be claimants know their price point, and they know that it will cost a lot more for their target to defend a lawsuit than to simply “pay the nice man” and be on their way, or to agree to stay within their own narrow niche of goods and services to be left alone.
We’re all entitled to enforce our intellectual property rights, and people can license or retain someone to enforce those rights for them. But when a demand is based on something other than a legitimate assignment, with dubious rights that aren’t supported when challenged, and apparently demanded purely for the sake of a “fast buck” rather than to clarify rights, then it becomes the sort of thing that gives lawyers a bad name.
If the writer of the email my client received had been serious and legitimate, he would have gone about this in a different manner. Since he did not, I recommended my client not to respond to the email. Do I think he was a troll? Not necessarily. It’s more likely he just hadn’t done his homework and didn’t know whether he had any of the rights necessary to send a genuine “cease and desist” notice. But he pressed “send”, anyway.
Have you received a questionable demand letter? Call me today at (212) 293-5556.
