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Trademark Bullying: Cease and Desist and Litigation Tactics in the Battle for Brand Protection

Recording of a 90-minute premium CLE video webinar with Q&A

This program is included with the Strafford CLE Pass. Click for more information.
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Conducted on Wednesday, January 31, 2024

Recorded event now available

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This CLE course will provide guidance for counsel to trademark owners to understand trademark bullying in the context of brand protection. The panel will outline approaches to fight trademark bullies or to respond to being accused of being a trademark bully.

Description

Trademark challenges include bullying claims. Social media facilitates public disputes by targets of trademark enforcement efforts as to whether the trademark claims are justified. The backlash potential is significant if trademark owners are not engaged in legitimate brand protection.

When does aggressively enforcing a trademark cross the line and go too far? The price of such actions can be hefty. In 2022, the Tech Transparency Project reported that Apple had filed more trademark oppositions than Google, Microsoft, Amazon, and Meta combined. Smaller companies that are seeking protection for their marks that are or include apples are concerned that Apple will challenge any mark they put forward.

Are existing tools adequate to defend against trademark bullying? Is new legislation needed to address the problem?

Maintaining brand reputation is a top concern for brand owners. As a result, counsel must carefully craft communication and cease and desist letters to minimize the risk that the brand owner will be deemed a bully for enforcing its trademarks.

Listen as our authoritative panel of trademark practitioners examines trademark bullying and the current legal landscape. The panel will offer strategies for dealing with trademark bullies and protecting your brand without being a bully.

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Outline

  1. Current landscape
    1. Public relations and social media influence
    2. USPTO
    3. Court treatment
  2. Strategies for combating trademark bullying
  3. Best practices for legitimate trademark enforcement programs

Benefits

The panel will review these and other key issues:

  • How are the courts treating trademark bullies?
  • What steps can a trademark owner take and what are the existing tools for counsel when a trademark owner believes it is the target of a trademark bully?
  • What are best practices for developing and maintaining legitimate trademark enforcement?

Faculty

Baird, Stephen
Stephen R. Baird

Shareholder
Greenberg Traurig

Mr. Baird works with clients to address their most difficult trademark problems. He provides strategic guidance on...  |  Read More

Grinvald, Leah
Leah Chan Grinvald

Dean and Professor of Law
UNLV William S. Boyd School of Law

Dean Grinvald is an internationally recognized intellectual property law scholar, whose research focuses on the...  |  Read More

Kim, Candice
Candice E. Kim

Shareholder
Greenberg Traurig

Ms. Kim focuses her practice on the clearance, procurement, maintenance, enforcement, licensing, and monetization of...  |  Read More

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