The newest villain in the IP world is the “trademark troll”. This is a person or entity who attempts to register a mark and then demands payment and threatens litigation against unsuspecting companies that have adopted the same or similar marks.
Some trolls are considered merely opportunistic in nature. These trolls don’t actually use any trademarks, but still attempt to register well-known or new trademarks registered by a different company in other countries, in hopes of that company eventually wanting to use it in the troll’s country at some point in the future. The troll then sits back and waits until the other company enters the country and finds its trademarks already registered and therefore unavailable to use. The company then has no choice but to pay the troll a licensing or purchase fee. This happens frequently in “first to file” countries where use of a mark is not required to register a trademark, for example China.
In other cases the troll claims, without basis, to have actually used a particular trademark and threatens legal action against any company that uses the mark, even in unrelated areas.
And then there are trademark bullies which are owners of well-known trademarks that attempt to assert their rights more widely than would normally be considered legitimate. These bullies often bring actions against parties operating in totally unrelated areas where confusion would be highly unlikely.
Here are some tips with regards to trademark trolls and becoming a victim:
- File trademark applications as early as possible in the countries in which you currently do business or manufacture or source products in.
- Also file trademark applications in any countries in which you think you will expand into in the future.
- File transliterations of your marks in the local language, as well as logos.
- Establish watch services or conduct trademark searches to identify potential trolls at an early stage.
- Search Google and local media for references to the mark regularly.
- Keep a detailed and accurate record of your trademark use. This will be invaluable should a conflict arise and you will need to show first use of your mark.
- If contacted by a troll, keep all emails and notes of verbal communications well documented and organized.
- Try and set aside a litigation fund for conflicts in the future, should they arise.
If you think you are being harrassed by a trademark troll, please contact us for further advice!