“While labelling someone as a ‘trademark troll’ is a convenient way to discuss entities that appear to be doing something wrong, such oversimplifications are problematic. ‘No one likes to hear this, but every case is truly unique,’ Gerben said.”
While readers of this website will be well aware of the damaging impact of “patent troll” rhetoric that has reached the highest levels of American political discourse, many players in the trademark space have been shining a light on the issue of “trademark trolls” in recent years.
Trademark trolls can take several different forms, according to a December 2015 article published in the INTA Bulletin. Generally, a troll will register a trademark, often viewed as a frivolous mark by others in the industry, and then demand licensing payment, threaten litigation or issue serial takedowns on e-commerce platforms through assertion of the mark. These can include companies that file for domestic trademarks for a mark owned by a foreign company that hasn’t yet entered that market or entities, including individuals, who claim trademark use and registration to threaten infringement or issue takedowns against other entities, even when their use of the mark is in unrelated areas. Last spring, the word “troll” was thrown around once or twice to describe Faleena Hopkins, a romance novel writer who was asserting her trademark rights to the use of the word “Cocky” against other writers using that word in their book titles. Last June, changes to Canadian trademark laws that shifted requirements for trademark registration from first-to-use to first-to-file had sparked some fears that trademark trolling could result.
Ken Reil and Trademark Watch Dawgs Fight Back Against the Trolls
Into this stormy atmosphere steps Ken Reil, Founder of the small business collective Trademark Watch Dawgs, which is trying to build momentum towards challenging allegedly frivolous trademarks that are being used to promote anticompetitive schemes, especially in the print-on-demand industry. Reil, who founded the group last February, has created a Facebook group for affected business owners who want to share information and a Patreon crowdfunding mechanism to raise money to oppose registered marks. While there is certainly support for the perceived goals of the Trademark Watch Dawgs group, their story also functions as a bit of a case study on the poor ability of black-and-white fairy tale tropes to serve as a well-functioning analogy to explain the grayer areas of intellectual property law.
Prior to founding Trademark Watch Dawgs in early 2018, Reil’s business background was in creating signs and graphics, a venture which spilled over into doing apparel and screenprinting. Reil got into the print-on-demand industry and began selling T-shirts and apparel on platforms such as TeePublic, Redbubble and Merch by Amazon, when he says that the prospect of trademark trolling began to rear its ugly head between four and five years ago. At that time, trolling entities were issuing takedown notices based on the use of popular phrases trademarked by those entities. “It’s caused a real fervor in the print-on-demand industry, especially class 25,” said Reil, citing the trademark class covering clothing, footwear and headgear. “It’s a cancer. People are trying to grab any phrase they can and get it registered to kill off any other competition.”
Reil noted that takedowns by these trolling entities are often issued around shopping holidays like Black Friday or Cyber Monday. Upon a closer inspection of the trademarks being asserted, Reil and others have found that many of them include specimens of use that are likely fraudulent. “A number of us work full-time in the print-on-demand world and we were trying to figure out a way to fight this,” he said. After learning about letters of protest that could be filed with the U.S. Patent and Trademark Office (USPTO), Reil started the Trademark Watch Dawgs group on Facebook and he said that 800 people joined the group on its first night of existence. Currently, the group has reached 7,960 members and Reil said that his goal was to grow to a community of 25,000 at some point next year.
The Patreon page for Trademark Watch Dawgs invites interested individuals to contribute monthly funding at levels ranging from $2 per month up to $75 per month. Currently, Reil said that the group has about 300 Patreon contributors which help the group raise anywhere from $1,600 to $1,800 per month. The organization has a goal of reaching between 1,500 and 2,000 paying subscribers and the group plans on using the funds to obtain legal advice and pay for the cost of filings, such as petitions to cancel trademarks which the group finds to be frivolous.
Opposing Frivolous Marks: An Expensive Task That’s Easy to Oversimplify
Josh Gerben, Founder of the Gerben Law Firm, said that he is presented about once per month with these kinds of trademark issues from clients facing assertions of trademarks which arguably shouldn’t have been registered by the USPTO, though he said that examiners at the Trademark Office have been doing a better job of identifying phrases that fail to function as a trademark. While businesses facing a takedown can file a petition to cancel to prevent the entity from policing the mark in the future, such filings are costly for small businesses to take on. “Possession is nine-tenths of the law and if you’re trying to take something from someone, that can be expensive,” Gerben said.
Gerben noted that he could understand the appeal of a crowdfunding group like Trademark Watch Dawgs for small business owners who do not have a budget that allows them to hire a private attorney to cancel marks. The cost of filing a petition to cancel at the Trademark Trial and Appeal Board (TTAB) is $400 per class, so if an entity is trying to a cancel a mark registered in multiple classes, the initial legal work and the filing fees can easily reach $2,000 or more. Then if the trademark owner wants to defend their mark, the case can quickly run into the tens of thousands of dollars. “Sometimes, the threat of cancelling a mark is enough to get the mark owner to stand down,” Gerben said. “You might be able to push a party into a settlement just by filing a petition to cancel, but if there’s no settlement, it can turn into an expensive proceeding.”
News media and their audiences can get whipped up into a frenzy over stories that some entities are trademarking terms or phrases that seem as though they’d be perfect candidates for trolling uses, but Gerben notes that such fears are often outsized. For example, despite discussion over American rapper-songwriter Cardi B’s attempts to trademark the phrase “Okurr,” the trademark application will likely never result in registration of the phrase on the Federal Register due to its widespread use in the drag community, as a video released by Gerben on his Twitter account notes. Gerben discussed “Boston Strong” as another example of a phrase that, because of its widespread usage, likely wouldn’t result in a trademark registration. However, he did note that trademark registrations that are arguably inappropriate do get granted.
Still, Gerben had questions regarding the efficacy of a group such as Trademark Watch Dawgs, despite the good intentions upon which it was founded. He noted that, for a party to have standing in federal courts to challenge a trademark, that party typically had to prove that it was an aggrieved party. “You have to have some reason for bringing the claim, you need some skin in the game,” he said. Gerben personally hasn’t had experience with standing issues at the TTAB, although the tribunal has said in the past that consumers could have standing to oppose a trademark in that forum. Further, Gerben added that, while labelling someone as a “troll” is a convenient way to discuss entities that appear to be doing something wrong, such oversimplifications were problematic. “No one likes to hear this, but every case is truly unique,” Gerben said. “In some cases, someone might have legitimate rights and claims to a specific mark. In other cases, they might be trying to take advantage of something that they shouldn’t have the right to own. Obviously, optics are something that everyone is aware of, but I think you have to take each case independently.”
Anti-Trolling Efforts Already Seeing Some Fruits of Success
Although Trademark Watch Dawgs is a young organization, Reil said that the group has achieved some successes, albeit limited due to the low level of current funding. He said that the group had filed more than 250 letters of protest at the USPTO, about 150 of which had been accepted by the Office. “Because we’re only a year into this, we’re just starting to see some of the fruits of our actions,” Reil said. One of those fruits involves letters of protest filed in response to a trademark application for the phrase “Occupy Mars” to be registered in class 25. After letters of protest were accepted by the USPTO, the applicant wound up abandoning the application six months later.
Reil also discussed other marks that members of the group had worked to oppose, such as one applicant looking to trademark the term “Mama Bear”; after that application was published, a letter of protest succeeded in bringing the mark back to an examiner. “Many members of our group are very active in tracking marks that are personal to their business,” Reil said. “If a trademark application is going to infringe on your business and impact you financially, you’ll want to learn how to file a letter of protest and we’ll give you the tools and training in the group to do that.”
Currently, Reil said that letters of protest coming from group members are typically filed in the names of individual group members. The group is also looking at ways that they could incorporate as a nonprofit entity so that such actions could be undertaken in the name of the Trademark Watch Dawgs group itself. Reil said that he has been in touch with USPTO personnel who have provided a good deal of input on how to file successful letters of protest. Reil said that he spoke with two USPTO trademark executives, including Commissioner for Trademarks Mary Boney Denison, at a recent event sponsored by the California Lawyers Association in Los Angeles. IPWatchdog reached out to the USPTO for comment on the meeting and the topic of trademark trolling, but did not receive a response as of the time of publication.
Reil said that he’s also been trying to get the message to trademark attorneys in general, who have the ability to turn down work from applicants looking to register seemingly frivolous marks. “We’re trying to teach trademark attorneys that it’s nice to get a fee, but that a lot of these marks are very frivolous and they’re hurting a lot of people,” he said.
Trolling Issues in Foreign Distribution Agreements and the Print-On-Demand Industry
Sharon Urias, Partner at Greenspoon Marder, said that she’s found the trademark trolling issue to be fairly prevalent. “The problem is that small businesses don’t have the resources to fight them,” she said. While trademarks are supposed to be indicative of brands, Urias has seen instances where specimens of use display the supposed brand name on the front of the shirt instead of on a label or price tag. In those instances, the USPTO shouldn’t be accepting the marks for registration. “The examining attorneys need to be stricter with the specimens that they’re accepting,” she said.
Urias also spoke to the issue of foreign trolls who register marks in their home country based on brand names which are popular internationally and then lie in wait for the foreign player to enter the market. “In a sense that’s even scarier because it could be an affiliate or distributor who you expect to trust,” she said. She discussed one situation faced by a client who had a distributor in Mexico. While the distribution agreement gave the distributor the right to use the client’s registered trademark in Mexico, the distributor also went and registered the mark in Mexico for themselves, unbeknownst to Urias’ client. After the distribution agreement was terminated, the former distributor opposed the client’s right to use its own mark in Mexico.
Urias said that a group like Trademark Watch Dawgs could be very effective if it pursues goals in a strategic manner. “Given the rise of the problem in the print-on-demand industry, I think it could be a very effective tool to combat trademark trolls,” she said. Although a letter of protest could be helpful, she noted that they don’t carry the same weight as a cancellation proceeding. Urias also said that the potential concern with a group like Trademark Watch Dawgs, with which she was personally unfamiliar, would be the potential agenda of those controlling the actions of the group. “You’d want to make sure that the person making the decisions doesn’t have ulterior motives, but in theory it seems like a good idea,” she said.
The sour taste that the trademark trolling issue puts in the mouths of those who encounter it can lead people, including small business owners, to think negatively of trademarks in general. Urias said that it’s important to remember that the purpose of trademarks, when used properly, is to protect the consumer. “The whole idea is that you don’t want consumers buying Pepsi when they think that they’re buying Coke,” she said. “You want consumers to know the source of the goods that they’re purchasing. That’s what I always circle around to when analyzing the issue.” While a trademark applicant may think that they have a clever phrase they want to protect, the legitimate use of a trademark is to protect a brand that tells a consumer that they can expect a certain quality in goods or services under that brand name.
Are Frivolous Trademarks Easy to Discern? Reil Faces His Own Trademark Issues
Reil stated that Trademark Watch Dawgs has never said as a group that they oppose the idea of trademarks in general and, indeed, they want to encourage the legitimate uses of trademarks for the purposes of brand building. However, the trademark registration activities of Reil himself have rankled people given the group’s goal of canceling trademarks that shouldn’t have been registered; a few posts that are publicly available on Reddit and a since-deleted thread on the group’s Facebook page speak to these issues. In September 2017, the USPTO registered to the Supplemental Register a trademark filed by Reil for the standard character mark “All Hives Matter,” and last November the agency received another application from Reil for the standard character mark “Naked Banana.” Both applications cover the use of the mark for class 25, the particular trademark class where the trolling issue is apparently most prevalent.
When asked about both trademarks, Reil was very forthcoming. He said that raising honey bees was a profession that goes back at least three generations in his family to his grandfather, who raised bees in Germany before immigrating to America. He filed for the trademark at a time when becoming a beekeeper was potentially a part of his future business plans and he did have plans for releasing merchandise using that mark. Naked Banana is a brand that he is currently planning to build for T-shirts featuring political satire to be sold on Merch by Amazon and other print-on-demand platforms.
In discussing the “All Hives Matter” mark, Reil said that he has never issued a takedown notice based on the mark and never will; he similarly said that he wasn’t interested in coming after people based on the “Naked Banana” mark. He also noted that many of those who have raised issues about his trademark ownership have done so anonymously, and said they don’t understand the history of the process that led Reil to found Trademark Watch Dawgs, much of which involved lessons learned during the “All Hives Matter” registration process. He said that every time he and other group members have been attacked for their own trademark ownership, the group’s Facebook membership has increased. He added that he doesn’t personally profit from any of Trademark Watch Dawgs’ activities, including the collection of Patreon fees. Reil chalks up a lot of the animosity to issues that some people have against those who make a livelihood within the print-on-demand industry. “I would pay for some of them to fly to Vegas [where Reil lives], I’ll buy them dinner and we’ll discuss what the problems are and if I don’t change their minds, I’ll eat my own words,” Reil said. “But they don’t want to do it and drop their anonymous identity.”
Still, it’s not hard to see why the complaints have arisen, anonymous though they may be. A quick Google search of the term “Naked Banana” shows that it is closely associated with a meme widely appearing on the bulletin board website 4chan and its use online goes back at least as far as April 2010. Much like Gerben’s analysis of the Cardi B “Okurr” mark shows, one could imagine a situation where Reil ends up receiving a refusal to register the mark, as it qualifies as a widely used message under 1202.04(b) of the Trademark Manual of Examining Procedure. One could even imagine a scenario where members of Trademark Watch Dawgs file letters of protest with the USPTO to increase the likelihood of that result.