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972-248-8080 DALLAS
713-830-2207 HOUSTON
512-691-4100 AUSTIN
a blue and orange check mark with the letter w on it as the Wilson Whitaker Rynell Logo

Trademark Bullying: Defending Your Brand From Trademark Overreach

John Wilson • June 27, 2024

Trademark Bullying: Shielding Your Brand Against Aggressive Trademark Tactics

In the United States Patent and Trademark Office (USPTO) Trademark Litigation Study reported to Congress regarding unfair trademark litigation tactics, the USPTO defined 'Trademark Bullying' or 'Trademark Trolling' as the excessive enforcement of trademark rights. This involves persons and entities using their registered trademark brands to unduly harass other businesses beyond reasonable legal interpretations or even that allowed under the law. Unfortunately, this learned behavior appears to match strategies used by patent entities and copyright bullies, where some companies adopt a legal tactic of sending threatening demand letters or suing to force settlements. For more information about responding to demand letters, see our Checklist For Responding to Demand Letters.


This Blog is for Both the Trademark Bully and the Bullied:

Both Can Lose by Their Trademark-Related Actions and Inactions!


What is Trademark Bullying?

Trademark bullying is the intentional or negligent misrepresentation of the strength of a trademark beyond what is allowable at law. Trademark trolls, which can be large or small businesses, often overextend their rights as defined under the Lanham Act. They frequently issue threatening cease-and-desist letters based on shaky grounds. They intentionally or negligently misinterpret the Lanham Act, and in doing so, overemphasize the strength of their trademark or exaggerate how their trademark prevents you from using your trademark in commerce. These trademark overreaches often appear in the form of a demand letter that pressures the recipient to stop using their mark or face a lawsuit. Some letters aim to extract licensing fees, quick settlements, or push for co-existence agreements from those they accuse of infringement. While not all these cases go to court, the mere threat of litigation can be enough to economically coerce smaller businesses or individuals into compliance. Unfortunately, many do choose to simply give up rather than defend themselves in expensive litigation and accept whatever time, effort, and funds they invested in designing their logo and hiring their original lawyer who filed their trademark application.


Why You Should Not Be a Trademark Bully?

Trademark bullying is a significant challenge for businesses of all sizes. Not only does it put the bully at risk of losing its trademark, but it also stifles innovation and is unnecessarily anti-competitive. You have every right to protect your trademark, but a fair and just society also demands it is done the right way and in the correct manner. You must find a balance between unproductive aggressive enforcement tactics and responding effectively within a trademark enforcement demand letter.  Do you really want to risk losing your trademark because you sent an overreaching trademark cease and desist letter to a competitor? 


A petition to cancel can be filed against a trademark bully to cancel the bully's trademark with the Trademark Trial and Appeal Board (TTAB). While "trademark bullying" itself is not a standalone legal ground for cancellation, the abusive enforcement tactics of a bully can lead to closer scrutiny and the potential discovery of valid grounds for canceling the trademark. Most often, we've seen trademark bullies fail to realize that the person or entity they demand to cease and desist is actually the senior user or first to use the mark. This gives priority to the bullied party and provides a basis to file for cancellation of the bully's mark. Baron Philippe de Rothschild v. Paramount Distillers, Inc., 923 F. Supp. 433, 438 (S.D.N.Y. 1996) states that even if the defendants' mark is incontestable, it would not be incontestable against a senior user. Similarly, DeRosier v. 5931 Business Trust, 870 F. Supp. 941, 948 (D. Minn. 1994) highlights that while defendants’ use of their properly registered service mark is otherwise incontestable, that use must yield to a prior user's adoption of the same or a confusingly similar service mark within a specific geographic area.


The Lapp Test: Essential Steps Before Sending Or Responding To A Cease and Desist Letter

Before sending or responding to a cease and desist letter, it’s crucial to assess these factors through the Lapp Test to ensure you have well-founded position grounded in the facts and the law.  The Lapp Test originates from the case Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983). In that case, the court established a set of factors to determine the likelihood of confusion between two marks. These factors have since been widely adopted in by the courts in trademark infringement cases to provide a systematic approach to evaluating the potential for consumer confusion. The “Lapp Test” helps weigh the likelihood of confusion between two marks by considering the following factors:

  • Strength of Owner’s Mark:

How distinctive and recognizable your mark is.

  • Similarity of the Marks:

The degree of resemblance between the two marks.

  • Consumer Sophistication:

The attention and care consumers use when making purchasing decisions, especially for high-cost items.

  • Duration of Use:

How long the alleged infringer has used the mark without causing confusion.

  • Actual Confusion:

Evidence of actual consumer confusion, or lack thereof.

  • Intent:

The intent behind the alleged infringer’s use of the mark.

  • Marketing Channels:

Similarity in marketing and advertising methods.

  • Target Audience:

Whether the sales and marketing efforts target the same audience.

  • Goods or Services Similarity:

The similarity of the goods or services associated with the marks.

  • Consumer Perception:

How consumers perceive the relationship between the goods or services.

  • Market Presence:

Whether consumers might expect the trademark owner to enter the infringer’s market.


Striking the Balance With Trademark Enforcement Letters

Trademark owners must carefully weigh the risks of aggressively enforcing their trademarks against the dangers of not being assertive enough, which can risk the trademark entering the public domain due to non-enforcement. Overzealous enforcement can lead to accusations of trademark bullying and potential legal backlash. However, failing to adequately protect a trademark can result in the loss of rights and brand dilution. It's crucial for mark owners to find the right balance and avoid overreaching


Trademark Enforcement and Defense Lawyers Serving You

Consult Wilson Legal Group's trademark lawyers to effectively navigate the complexities of trademark enforcement. Proper evaluation and early legal advice can prevent costly litigation and aid in protecting your brand. The USPTO defines a trademark bully as “a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.” Our trademark attorneys will employ the Lapp Test before sending or responding to a cease and desist letter to help provide the most strategic protection for your trademark and your brand's legitimacy:


  • Prevent Unnecessary Litigation: The Lapp Test helps assess the likelihood of consumer confusion, which is a key factor in trademark infringement cases. By thoroughly evaluating this, you can avoid unnecessary and costly litigation if the likelihood of confusion is low.
  • Strengthen Your Case: If the Lapp Test indicates a high likelihood of confusion, it strengthens your position and can make your cease and desist letter more compelling. This can lead to quicker and more favorable resolutions without going to court.
  • Avoid Baseless Claims: Conducting the Lapp Test ensures that your claims are valid and not overreaching. This helps maintain credibility and avoids potential counterclaims of trademark bullying or bad faith.
  • Legal Obligation: Trademark owners are legally required to enforce their rights to avoid losing them. However, this enforcement must be done responsibly. The Lapp Test provides a structured way to assess the situation and ensure that your actions are justified.



Don't be a trademark bully or face trademark bullies alone; let our trademark attorneys help you protect and defend your trademark rights and brands.


Contact Us or Call 972-248-8080 for a Free Consultation!


A person is holding a cell phone in front of a book titled artificial intelligence
By John Wilson February 19, 2025
Copyright and Translated Content: Who Owns the Creative Rights? Understanding Copyright Law and Translation Copyright law protects creative work and bestows sole authority over the work upon the creators. For example, the owner of the work of a novel has the right over the work under the concept of the right under the copyright. Courts have found that “the degree of protection afforded by the copyright is measured by what is actually copyrightable in the publication and not by the entire publication.” See, e.g., Dorsey v. Old Sur. Life Ins. Co., 98 F.2d 872, 873 (10th Cir. 1938) (emphasis added). For translations, the situation is not very clear. Translations involve creative judgments over word translation and not the translation of mere words. Hence the knowledge about the applicability of the concept of the right over the work is essential for establishing the right over the work. For example, a Court in the Northern District of California stated that: “ the determinative question is whether Plaintiff holds a valid copyright. ” Signo Trading Intern. Ltd. v. Gordon, 535 F. Supp. 362, 363 (N.D. Cal. 1981). The Signo Trading Court dismissed Plaintiff’s infringement claims because plaintiff did not have a valid copyright as a matter of law in the translations and transliterations at issue because they lacked the “requisite originality.” Id. at 365. Can Translation Be Considered a Creative Process? The Practice of Translating Translation goes beyond the replacement of one word by the equivalent word from the source text. Translating literary work, poetry, and fiction with deeper meanings beyond the surface text is a complex, artistic process. Translating books like The Iliad, for instance, requires the practice of artistic translation to translate the emotions, thoughts, and the culture correctly. Technical Translations and Legal Translations Conversely, technical writing and texts for the law need less creativity and instead value correctness over all else. These writing forms require strict adherence to the original sense, leaving very little room for artistic interpretation. Translations for these writing forms thus typically involve less creative contribution and less potential for the work being protected by copyright. Why Is Creativity Important for Translations for Copyright? Originality when translating For a work to be subject to copyright, some creativity, however slight, is essential. Even when the translation is taken from the work, the translation also includes some creative work by the translator. This creativity can make the translation subject to copyright. A derivative work must “recast, transform[], or adapt[]” a preexisting work and “consist[] of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship.” Id. In other words, it must change or alter the pre-existing work’s content and must itself be an original work of authorship. The Supreme Court stated that “ [t]he sine qua non of copyright is originality ” and that “ [t]o qualify for copyright protection, a work must be original to the author. ” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991) at 345. “Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity.” Id. (citing 1 M. Nimmer & D. Nimmer, Copyright §§ 2.01[A], [B] (1990)). In granting a Rule 12 motion to dismiss, the Signo Trading Court held that: " It is inconceivable that anyone could copyright a single word or a commonly used short phrase, in any language. It is also inconceivable that a valid copyright could be obtained for a phonetic spelling, using standard Roman letters, of such words or phrases. Although lists of words and translations of larger works may be copyrightable, Plaintiff cannot claim credit for any of the elements which make those things copyrightable. For these reasons, Plaintiff does not hold a valid copyright on the translations or transliterations ... " Signo Trading, 535 F. Supp. at 365. The Problem of the Derivative Work However, translations are generally "derivative works" - derived from the work of another. Because of this, the owner or author of the work is generally required to agree to the translation. Translations made illegally can be held under the classification of copyright violations, even when the translator has added creative elements. Who Has the Right over the Translated Work? Employer-Commissioned Translations Ownership of the copyright for the translation work varies. If the translation is commissioned by the owner of the original work, the owner will retain the right. Even when the translator adds creativity by passing over the original emotions and thoughts, the owner will not necessarily lose the right over the translation work. In some circumstances, the translation work can be accredited by the translator without them holding the right over the work. Independent Translations If a translation is performed independently by the translator, the translator can even be identified as the co-author of the translation. Nevertheless, the author typically has the underlying copyright, restricting the translator’s right over the work. Creative Translations from the Public Domain In certain cases, a translation may be creative enough to warrant its own copyright. For example, a translator adapting a classic work or a book in the public domain into modern language may introduce enough originality to qualify for copyright protection. However, direct, word-for-word translations are typically not considered original enough to receive new copyright protection. What About Machine Translations? The Human Creativity Copyright Requirement Machine-generated translations, including those produced by platforms like OpenAI , operate through advanced algorithms that replicate language patterns rather than capture the human touch. Unlike translations crafted by human translators who often infuse cultural insight and genuine emotion into the work, OpenAI's output is rooted in statistical patterns and data. Consequently, while these translations are impressively efficient and accurate, they typically fall short of the originality required for copyright protection. This distinction underscores the human creativity requirement needed to secure a valid copyright . Ultimately, although machine-generated translations serve as powerful tools, they do not offer the same legal and creative protections as those provided by human translators. The Bottom Line: Navigating Copyright in Translations Translations occupy the middle ground under the law of the copyright. Albeit the right of the original author generally has the right under the copyright, the right under the copyright can also be claimed by the translator provided the translation is creative enough. Central considerations here include the creativity the translator has added, the nature of the work being translated, and whether the work is under the public domain. These considerations establish the right of the owner under the copyright for the translation. Why Wilson Whitaker Rynell for Your Copyright Work? At Wilson Whitaker Rynell, our professional lawyers specialize in the practice of copyright law and copyright litigation , including the complex subject matter of translation work. We can provide you with advice about the ownership of your work under the provisions of the copyright, and protect your creative property. If you are the author, the publisher, or the translator, you can rely upon the advice from our firm. Copyright Translation FAQS
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Female Divorce Attorneys in the Dallas-Fort Worth Area In many instances, divorce cases are challenging and emotionally taxing experiences. For this reason, it’s common for people to prefer working with an attorney of the same gender because they feel as though the attorney can empathize and understand their situation more. At the end of the day, the gender of your attorney may not affect the outcome of your case, but it’s important to feel as comfortable as possible while navigating through the process. At Wilson Whitaker Rynell, our experienced female divorce attorneys offer compassionate and empathetic approaches while they develop a comprehensive legal strategy to represent you. Why Should You Choose a Female Divorce Lawyer? There are many reasons why hiring a female divorce attorney can help you throughout your divorce. For one, they often have experience working on issues that disproportionately affect women in divorce such as spousal support (alimony), child custody disputes, and asset division. Additionally, female divorce lawyers offer a unique level of empathy, understanding, and communication. As a result, many clients feel that they are more approachable and compassionate, which is beneficial when dealing with the emotional turmoil of the process. More importantly, female divorce attorneys are more familiar with how the court treats women in divorce cases and use this knowledge to strategically protect their clients’ interests, whether male or female. Why Our Female Divorce Attorneys May be Right for You At Wilson Whitaker Rynell, our female divorce attorneys are skilled, knowledgeable professionals, they also have many years of experience in handling complex divorce cases. Whether it’s issues surrounding custody of children, alimony, or asset division, our female divorce lawyers ensure each client receives high-quality legal advice. Our firm’s female divorce attorneys provide the highest level of personal attention, ensuring that each client’s unique needs and concerns are addressed through every step. Unique Challenges Women Face in Family Law Disputes in Texas Family law disputes can be emotionally charged and legally complex, especially for women navigating the process in Texas. Women often encounter unique challenges due to their roles in the marriage and family dynamic, particularly when it comes to child custody, child support, and the division of marital assets. Child Custody Challenges In many marriages, women take on the primary caregiving role for their children. However, when it comes to custody decisions, courts in Texas prioritize the best interests of the child over parental gender. While this often works in favor of mothers, women may still face hurdles in proving they are better suited to provide the stable environment the child needs, especially if their ex-spouse disputes custody. Factors such as work schedules, living arrangements, and financial stability can come under scrutiny. Child Support Issues While Texas law allows women to seek child support, collecting these payments can sometimes prove difficult. Women awarded child support may find themselves dealing with ex-spouses who delay payments, make partial payments, or refuse to pay altogether. Enforcing child support orders often requires legal intervention, which can add to the emotional and financial strain. Division of Marital Assets In Texas, a community property state, marital assets are typically divided equitably during divorce. Women who are awarded assets such as the family home may face challenges related to maintaining the property, refinancing a mortgage, or covering associated expenses. Additionally, women who sacrificed their careers to support their spouses or raise children may feel disadvantaged during the division of assets if their earning potential is limited compared to their ex-spouse. How Your Divorce Attorney Will Support You Each divorce case is unique, and having an experienced attorney standing by you is vital. Whether you’re dividing assets, negotiating child custody, or managing other complex legal issues, the female divorce attorneys at Wilson Whitaker Rynell are here to protect the interests of you and your family. Our attorneys will take the time to understand your unique circumstances and empower you to make informed decisions that support your career, family and future. When you choose a female divorce attorney from Wilson Whitaker Rynell, you can trust that they will: Prioritize your family’s best interests. Negotiate with integrity, ensuring fairness and transparency. Clearly explain all your options and their potential outcomes. Help you create the future you want by offering trusted legal advice. Use efficient methods to minimize unnecessary costs and keep the process manageable. Navigating family law disputes requires a thorough understanding of Texas family law and strong advocacy. Women facing divorce or other family law issues are encouraged to seek an experienced family law attorney who can provide personalized guidance. A skilled lawyer can help craft a strategy that protects their rights and ensures a fair resolution. This includes representing their interests in court, negotiating settlements, and helping enforce orders such as child support or spousal maintenance.
A man riding a horse with a bull behind him
By John Wilson January 23, 2025
Understanding Writs of Execution in Texas: A Layperson’s Guide If a court determines that someone owes money to another party, the debtor—referred to as the "judgment debtor"—typically has 30 days to pay off the debt. If the debt remains unpaid after this time, the creditor, or "judgment creditor," can take legal action to enforce the payment through a Writ of Execution . This legal process, governed by Texas law, enables creditors to collect what they are owed by seizing and selling the debtor’s non-exempt assets. What Is a Writ of Execution? Under Texas Rules of Civil Procedure 629 , a Writ of Execution is a court order that authorizes a sheriff or constable to seize the debtor’s property to satisfy the debt. This writ is an essential tool for creditors when voluntary repayment has not occurred. Once the writ is issued, it is handed over to a county constable or sheriff, who is required to act “without delay” in collecting the debtor’s real and personal property. The seized property is then sold, and the proceeds are used to pay off the debt. If multiple writs are filed against the same debtor, the assets are distributed in the order the writs were received. What Property Can Be Seized Under a Writ of Execution? Texas law is very specific about which types of property can and cannot be seized to satisfy a judgment. Exempt Property Certain assets are protected from seizure under Texas Property Code § 41.001. These include: The debtor’s homestead (primary residence) Wages earned from employment Professionally prescribed health aids Workers’ compensation benefits College savings plans Some insurance benefits Personal property valued up to $50,000 for individuals and $100,000 for families Unique to Texas, the law also protects items like family Bibles, two firearms, pets, and for rural residents, livestock (e.g., 12 head of cattle and 120 fowl). This extensive list reflects Texas's cultural heritage and values. Non-Exempt Property Assets that are generally not exempt include: Vacation homes Timeshares Pleasure boats Airplanes Jewelry exceeding certain value thresholds The specific procedures for seizing different types of property are detailed in Texas Rules of Civil Procedure 639 . Can a Writ of Execution Be Avoided? Judgment debtors have a few options to avoid the execution of a writ: Filing a Supersedeas Bond A supersedeas bond can temporarily halt enforcement of the writ. This bond, filed with the county clerk or justice of the peace, preserves the status quo while the debtor seeks further legal remedies. This option is governed by Texas Rules of Civil Procedure 634 . Challenging the Execution Debtors can file a claim for wrongful execution in situations such as: The debt has already been paid Exempt property is being seized The levy is excessive Additionally, courts take extra care to protect property classified as a homestead under Texas Property Code § 41.002(c) . When only one spouse is responsible for the debt, Texas Family Code § 3.202(a) and related provisions provide guidance on levying against community or separate property. The Role of County Officials in Executing the Writ Once the writ is issued, its enforcement falls on county officials, typically a sheriff or constable. These officials must act in accordance with Civ. Prac. & Rem. Code § 34.072 , which requires them to execute the writ and report back to the court. They must: Give proper notice of the sale of seized property Ensure the proceeds are appropriately delivered to the creditor Avoid overstepping legal boundaries, such as seizing exempt property Failing to execute the writ properly can result in serious consequences, where a sheriff’s refusal to levy on a property initially listed as exempt (but later deemed abandoned) led to court action and damages awarded to the creditor. Preventing Fraudulent Transfers One challenge creditors face is when debtors attempt to hide or transfer assets to avoid collection. To address this, Texas follows the Uniform Fraudulent Transfer Act under Tex. Bus. & Comm. Code § 24.001 et seq .. This act provides legal remedies to creditors when a debtor’s transfer of assets is deemed fraudulent. Effect of a Defendant's Death on Writs of Execution Under Civ. Prac. & Rem. Code § 34.072 , the death of a defendant after a writ of execution is issued halts execution proceedings. However, any lien acquired from the writ's levy is still enforceable by the county court when paying off the deceased's debts. Why Proper Execution Of The Writ Is Crucial The rules for filing and serving a Writ of Execution are strict and detailed. Missteps, such as filing the writ in the wrong county, failing to serve the proper parties, or missing key deadlines, can lead to delays or even render the writ ineffective. Both creditors and debtors must ensure compliance with these rules to avoid unnecessary complications. For creditors, failure to properly enforce the writ could mean losing the opportunity to collect on a judgment. For debtors, not responding appropriately to a writ could result in the loss of valuable assets, even those that might have been exempt.
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The Wilson Legal Group are Dallas attorneys that specializes in Patents, Trademarks, Copyrights, Trade Secrets, Complex Litigation, Business/Corporate Law, Family Law and Real Estate Law. At the Wilson Legal Group, our clients are our focus. Our philosophy is simple and straight-forward: Understand our clients' needs, hopes, and interests in order to help them flourish. Our staff strives to build strong relationships with our clients in order to appreciate their best interests and help them achieve their goals.

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