By: Austin Clements
November 3, 2022
Trademark law is a doctrine that rests upon protecting your rights, lest they be whittled away by others. Trademarks, or signifiers of source of origin of goods and services, rest upon the idea that a name or signifier of origin for good or service is distinctive enough to warrant protection under federal law, which includes the right to enjoin anyone else from using the mark. Marks that are more distinctive, that is they are more unlike any other mark that anyone uses, warrant far greater protection than a mark that uses words or features that other similar goods or services might need.This makes sense in theory, but in practice this leads to markowners with well-known marks and near infinite war chests to chase after any sort of mark that could be similar, as to maintain their original distinctiveness. This on its own is completely legal and not necessarily unethical, as many registered and larger marks accomplish this through working with individuals seeking registrations of similar marks, and often companies do not seek for outright cancellation of a mark.However, some larger marks and companies will often leverage the immense amount of resources they have to intimidate smaller markowners with legitimate claims to a mark through threats of expensive litigation and, once in the litigation phase, extensive discovery requests that can nearly bury any small-time attorney or firm working with these smaller markowners. This is known as “trademark bullying.”
Trademark bullying is the elephant in the room in IP that goes undiscussed. The single largest force that deters systematic trademark bullying, up until this point, has been public backlash. Trademarks are all about maintaining a brand, so when the public turns on the brand for the litigation actions they take, especially in the era of the Internet, it is seldom worth it to engage in harsh tactics if there will be public backlash. However, it is largely not a legal problem. Unfortunately, because cease and desist letters and threats of litigation occur outside the courtroom and before there is an actual dispute (although a threat of litigation may be enough to warrant an actual dispute for the purposes of declaratory judgments), they are largely not subject to judicial rules or case law. This does not mean that defendants are without a way to defend themselves against these practices. Discovery, one of the most expensive parts of litigation, is governed by the Federal Rules of Civil Procedure (FRCP). While TTAB proceedings do not use the FRCP, the TTAB appeals into federal court and these are used at the appellate level. The FRCP contains provisions that could be used, if enforced by the courts, to stop large companies from expanding their rights to the detriment of individuals and small business owners across the US.
FRCP 26(c)(1) provides in part that “A party from whom discovery is sought may move for a protective order in the court where the action is pending…The court may, for good cause, issue an order to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense, including [various remedies in (A)-(G)].” Some trademark plaintiffs have tried to claim FRCP 26 protection from discovery, but it is usually in carte blanche by claiming that the defendant is a trademark bully. However, by individualizing this approach and specifically citing actions taken, which may involve some waiver of attorney-client privilege, plaintiffs may actually have a better rate of success when making these claims.
Under the Rules, the court is best suited to “weigh fairly the competing needs and interests of parties affected by discovery.” According to the Supreme Court, “courts of justice are universally acknowledged to be vested, by their very creation, with power to impose silence, respect, and decorum, in their presence, and submission to their lawful mandates,” and that these powers are necessarily vested in the courts themselves. Thus, courts are given wide discretion in what they consider to be “annoyance, embarrassment, oppression, or undue burden or expense.” Besides the case law on the powers of the court, there is scant evidence as to what exactly these characteristics mean. Usually, 26(c) is invoked because of the expense or hardship of retrieving or the harm that would be caused if the information in the document was revealed. However, courts should consider the physical litigation expenses that small clients will have to undertake as a result of these discovery requests.
On average, trademark filings and fees for a proper application for registration of a trademark cost about $1,000. For a corporation that invests millions of dollars into its brand, this is a drop in the bucket, and they can afford the expense to ensure their protection. Brand value is almost always discoverable in trademark litigation, and often corporations use their value to show how much their marks are worth to them, but they are also indicators of the willingness these corporations have to litigate even the smallest of claims. By the same coin, plaintiffs could present their brand value or expenditures (which could involve a consensual breach of privilege) to show that they have already undergone immense expense during discovery, showing some form of “undue expense” or “oppression” when they are asked to produce even more documents. Thus, the court should order a FRCP 26(c) protective order in these situations and proceed beyond discovery.
By presenting these exacting numbers, this now shows the “good cause” requirement and is more specific than a generalized claim of trademark bullying. By applying the Third Circuit’s Glenmede factors, we can cite several instances of if the information is necessary. Information sought by trademark bullying does not usually violate privacy interests, but it is often sought for an improper purpose. While the court may recognize that finding information relevant to the case to be proper, the use of discovery to intimidate opposing parties into compliance surely cannot be said to be a legitimate purpose. In the fifth Glenmede factor, courts must weigh “whether the sharing of information among litigants will promote fairness and efficiency.” While this is typically interpreted as if the information is necessary to the discovery process, the requirement also contemplates that some discovery requests will simply be unnecessary, despite the open nature of the American discovery process. By strengthening this push for protective orders and leaning on textual interpretation of the Pansy factors, generalized statements and claims become specific when pondering the real damage and cost of trademark discovery against small defendants. Trademark bullying has remained the elephant in the room for too long, it seems that someone should take it for a walk.
 See Qualitex v. Jacobson Prods. Co., 514 U.S. 159, 162 (1995) (holding that colors can meet the basic requirements for trademark protection, if they are a signifier of source of origin).
 See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4,9 (2d Cir. 1975) (outlining the Abercrombie spectrum of distinctiveness from generic marks to fanciful marks).
 See Freecycle Network, Inc. v. Oey, 505 F.3d 898, 902, 905 (9th Cir. 2007) (describing that a trademark owner must diligently enforce their rights against all who may encroach upon the mark, as they would harm the distinctiveness in the Abercrombie spectrum).
 TianTai Law Firm, Strategy for Settlement Negotiation in IP Infringement Cases, Lexology, Nov. 13, 2020, https://s3.amazonaws.com/documents.lexology.com/73717b6a-b5ba-4c6f-8d3a-d4e0c653c607.pdf (outlining one law firm’s strategy for IP settlement, describing it as advantageous to settle because usually the facts are clear and the interests between the parties can be resolved without adversarial dispute).
 See generally Leah Grinvald, Shaming Trademark Bullies, 2011 Wis. L. Rev. 625, 627 (describing the cease-and-desist campaigns by large corporations to intimidate small business owners into capitulation).
 See Public Backlash Leads to Backcountry.com Backing Down from Trademark Bullying, TechDirt (Nov. 7, 2019 7:28 pm), https://www.techdirt.com/2019/11/07/public-backlash-leads-to-backcountrycom-backing-down-trademark-bullying/ (detailing the backlash to Backcountry.com using the nation’s biggest trademark-exclusive firm to harass and send cease and desists to others who had trademarked some form of BACKCOUNTRY, which resulted in a Facebook boycott and a GoFundMe for a defendant who chose not to settle).
 See Already, LLC v. Nike, Inc., 568 U.S. 85, 92 (2013) (“a genuine threat of enforcement of intellectual property rights that inhibits commercial activity may support standing.”); see also PerfectVision Mfg. v. PPC Broadband, Inc., 951 F. Supp. 2d 1083, 1088 (E.D. Ark. 2013) (“to show that a case of actual controversy exists, a plaintiff must demonstrate standing: ‘a personal injury fairly traceable to the defendant’s allegedly unlawful conduct and likely to be redressed by the requested relief.’” (quoting Already, 568 133 S. Ct. at 726)); but see Microsoft Corp. v. SynKloud Techs., LLC, 484 F. Supp. 3d 171, 176, 177 (D. Del. 2020) (holding potential patent infringers could not have standing because they failed to allege an actual controversy because they had a purely subjective belief of pending litigation by Microsoft).
 See Willging et al, An Empirical Study of Discovery and Disclosure Practice Under the 1993 Federal Rule Amendments, 39 B.C. L. Rev. 525, 547-548 (1998) (estimating costs of discovery to be roughly half of the costs of attorney’s fees in the 1990s).
 Much litigation occurs inside of the TTAB, however the TTAB appeals into federal court, thus making TTAB appeals subject to the Federal Rules of Civil Procedure on appeal.
 Fed. R. of Civ. Pro. 26(c)(1).
 See Royal Oak Enters., LLC v. Nature’s Grilling Prods., LLC, 2011 U.S. Dist. LEXIS 133856 at *12-14 (2011) (denying motion for a protective order on the grounds that blanket trademark bullying claims are not enough to warrant a 26(c) order).
 Seattle Times Co. v. Rhinehart, 467 U.S. 20, 35 (1984) (holding that 26(c) protective orders do not infringe on First Amendment rights by enjoining discovery of information that would otherwise do reputational harm).
 See Chambers v. NASCO, Inc., 501 U.S. 32, 43 (1991) (citing Anderson v. Dunn, 19 U.S. 204 (1821)) (holding that the court has wide discretion to determine FRCP 26(c) “annoyance” and FRCP 11 sanctions).
 Fed. R. Civ. Pro. 26(c)(1).
 See Kuhns v. City of Allentown, 264 F.R.D. 223, 227-228 (2010) (outlining that movants for a protective order must establish good cause, not generalized harm).
 This number varies wildly, but broken down the fees are: $350 per class of goods and services for a TEAS Standard application or $250 per class for TEAS Plus. Filing trademark applications can be done without the assistance of an attorney, however any litigation to follow in the TTAB must have a licensed attorney or pro se representation, which becomes more and more unrecommended as the USPTO strengthens their requirements for registration.
 See Kuhns, 264 F.R.D. at 228.
 Glenmede Trust Co. v. Thompson, 56 F.3d 476, 483 (1995).
 See id.