How to Fight back...

[bidawinner]

"There are ethics involved. If a domain name is not infringing, threatening domain holders with lawsuits is unethical and the trademark holder should be held responsible," said Mikki Barry, president of the Domain Name Rights Coalition, which represents small businesses and Internet users in domain name battles against trademark holders.

Barry advises clients who are in circumstances like Tolliver's to file a petition with the US Patent and Trademark Office, which can ultimately revoke a trademark if it's misused by the holder. According to Barry, such a petition costs $200 to file, considerably less than mounting a full legal challenge. "



Old link from 1999 ..but very interesting approach.. (filing a petition to have their trademark revoked !)

http://www.internetnews.com/bus-news/article.php/3_156711

 

[jberryhill]

It would be nice if "being a jerk" was a grounds for cancellation, but unfortunately it is not. In trademark litigation, there is an affirmative defense of "trademark misuse", but courts have refused to recognize it as an independent cause of action.

The closest thing to an RDNH action is in 15 USC 1114, which provides a grounds for recovery of costs and attorney's fees against a party which makes a bogus UDRP claim.

 

[Ari Goldberger]

Another possibility (probably a longshot) is filing a cancellation petition with the PTO if the trademark has not been registered for at least 5 years and it can be shown that the mark is merely descriptive of the trademark owner's services -- and there is no secondary meaning.

I'm curious what my lawyer colleagues feel about this possible strategy.

 

[jberryhill]

Absolutely a possibility, if one of the grounds for cancellation is present. In the right circumstances, it might even be worthwhile to file a cancellation petition incident to the preparation of a UDRP response. Panels have a lot of deference for decisions of the PTO, and being able to say to the panel, in so many words, "Hey, the validity of the trademark is subject to a contested proceeding in the PTO, so you shouldn't decide in the complainant's favor but opt for the status quo" might be a worthwhile idea.

Ditto for filing an opposition to a pending application.

However, the $200 filing fee, plus whatever it takes to prepare one's brief, is the fee to get one of these things *started*. A cancellation proceeding is an inter partes adjudicatory proceeding - i.e. very much like a full-blown legal proceeding.

But, sure, if the grounds are present, then full steam ahead. One can also have the complainant arrested for bank robbery, provided there is probable cause to believe they have robbed a bank.

One can learn a lot by retrieving and looking at the file to determine how someone obtained a federal trademark application. To give an example from a UDRP proceeding which is currently pending, I found that the TM claimant had applied for federal registration of <MARK> claiming a first date of use in 1996, and specfically covering online retail activities. In their TM application, they used web page displays from their website at <MARK>.com. However, if you look at the registration and archive date for the domain name <MARK>.com, you find that they hadn't registered the domain name until 1998, at around the time they filed their TM application.

Some Complainant's cannot resist the temptation to try to make their case sound better than it really is. Carefully looking at the allegations and the exhibits will quite often turn up inconsistencies that have the distinct aroma of fraud. If there is one thing that UDRP panelists agree on, it is that they do not like to be played for fools.

Back on the point here, looking carefully at the evidence, one may indeed find grounds for cancellation of a trademark registration, or for opposition of a pending registration application.

It is even possible to move to stay a pending judicial proceeding in view of an administrative challenge in the PTO. The judge doesn't have to stay the case, but might be persuaded to let the PTO hash out the cancellation before scheduling days on his/her hearing calendar.

 

[bidawinner]

Without all the legalese, it would appear to me..simply as a lay a person..

that for a person/company without a large bank roll; this seems like an exception tool ..(filing for a TM revocation).

One I think it would send a very clear message to any corporation of any size that you are willing to not only to fight back but that you are willing to attack what they consider to be their "intellectual" property (would a TM fall under IP ?).

This may be the trigger for a more amibical solution.