TRADEMARK TROLLS: TROLLING FOR TRADEMARKS AND OTHER INTELLECTUAL PROPERTY

By: TONY PAGÁN, JR.

AS TECHNOLOGY evolves, so does our use of interesting and amusing terms for common technological trends. One such term is “trolling.” Often used to describe people who are purposely obnoxious or contrarian, “trolling” holds different meanings in the realm of intellectual property. While you may already be familiar with terms such as “copyright trolls” and “patent trolls,” you may not have heard of a less popular but ever-growing third, commonly referred to as the “trademark troll.” Unlike traditional trolling, which may be annoying and typically intended to harass or embarrass, trademark trolling can have serious legal consequences — and cost businesses a great deal of revenue in litigation costs.

What are Trademark Trolls?

A trademark troll is sometimes defined as someone who registers a trademark (or copyright) without any actual intention to use it. Some trolls scan the Internet for startup companies, new industries, and Kickstarter campaigns for names or concepts that may be worth money later on. Their intention is not to use the trademark, but sit on it and wait for someone else—preferably, a large company with deep pockets—to do so. The troll then might then send a written demand or file a lawsuit against the larger company for usage of the trademark.

A big issue with this “business plan,” however, is that, if the troll does not actually use the registered mark, it may not legally prevail against the larger company because the mere registration with the United States Patent and Trademark Office does not create a monopoly over that mark. To secure trademark protection, the mark must be actually used in commerce via the sale of a good or service. That said, in the digital age where a business can be created by simply creating a website with a secure payment method, actual “use” of a trademark in commerce is no longer the unambiguous benchmark it used to be.

Another common maneuver used by trademark trolls involves attempting to register a trademark that is overly broad. For example, a few years ago, the maker of the phone app Candy Crush, King Digital Entertainment PLC, sought to trademark the word “candy,” a hugely broad term. Surely Candy Crush has the right to protect its intellectual property and prevent knockoffs; but is restricting every other app developer from putting the word “candy” in its name a legitimate use of intellectual property rights? Or will such an overbroad enforcement of trademark rights inevitably lead to “crushing” the competition?

Unfortunately for King Digital, which also sought to trademark the word “saga” as it related to digital puzzle games, the public wasn’t too sweet on the idea. After the digital community expressed concern over the potentially overbroad enforcement of such a trademark, King withdrew its trademark application for the words “candy” and “saga.” However, this withdrawal does not affect a trademark King Digital holds in Europe for the word “candy.” So, for at least the time being, the makers of “Candy Land” and “Bubble Saga” could breathe a sigh of relief about the development and sale of their digital games in the United States.

Another example — though one of patent trolling — is Amazon.com, which received a patent on taking pictures of objects in front of a white background. Of course, an untold number of websites do just this, as it is a basic concept of photography. What made this patent application different from the rest is the specific technique and lighting placement Amazon.com uses to create a “seamless” white backdrop. This technique eliminates the need for additional retouching or adjustments, thus saving both time and money. Yet, from a layman’s perspective, nothing about the new method described by Amazon.com in its patent was clearly proprietary or different enough to warrant patent protection. Taking a photo against a white background is obvious; obvious enough that Amazon.com couldn’t possibly be able to overcome the obviousness requirement set forth by the US Supreme Court for new patents. Yet, the simple fact remained that no other patent had previously articulated the exact “4.5-5.5 distance ratio” contained in Amazon.com’s patent application, and as a result, Amazon.com was awarded its patent.

While Amazon.com currently holds the patent for “seamless” white backdrop photography, it should be noted that enforcement of the patent is nearly impossible. In order for Amazon.com to have grounds for litigation, infringing photographers and studios would literally have to disclose that they are copying Amazon.com’s technique and such a gratuitous disclosure would appear unlikely. Nevertheless, the actions of Amazon.com help highlight the questionable business practices currently taking place in the realm of intellectual property.

Why Trolling Exists

These forms of trolling, like many other nuisance-based endeavors, exist in part simply because there is money to be made in exploiting the vulnerabilities of the written law. However, trademark owners will argue that the reasons for their actions are to protect their brand. Regardless, trademark trolling can become a lucrative endeavor due to the fact that companies would prefer to settle such cases outside of court rather than litigate them publically. Moreover, intellectual property trolls sometimes register copyrights or trademarks overseas, where some businesses have not yet thought to register. As a result, when those businesses get bigger and go international, they may find that, while they have rights in the United States, they may have to pay the trolls healthy sums to get the rights to their names or designs overseas.

On one hand, if your business involves a brand, it is probably a good idea to register that brand as a trademark or service mark with the United States Patent and Trademark Office and take concrete steps to protect it. From a different perspective, if you are an upstart business developing your brand, you may not even be aware of the fact that seemingly ubiquitous terms, designs, or looks may be substantially similar to existing registered marks. Leaving you vulnerable to potential infringement claims.

Intellectual property can be a legally complex world. Make sure you are protected and that know how to fight back if you are being infringed upon. The firm of Cynthia Conlin & Associates have experienced lawyers who may be able to help you with your trademark or copyright infringement questions. Contact our Orlando attorneys today at 407-965-5519.

Source >> http://conlinpa.com/2018/01/01/trademark-trolls-trolling-trademarks-intellectual-property/