Defending Against "Trademark Bullying" is Goal of New Organization, Website
Apr 23, 2013, 06:00 ET
NEW YORK, April 23, 2013 /PRNewswire/ -- Faced with a surge in businesses seeking to undermine other companies through frivolous, expensive trademark infringement lawsuits, a new campaign has been launched to protect potential victims against such attacks.
Trademark bullying – defined by one expert in the field as a non-famous brand trying to impose trademark restraints on a non-competing entity – is the impetus for the establishment of www.trademarkbullying.org.
The new website is designed to be a national resource, an information clearinghouse that provides news, research, data and relevant case studies to help victims of illegitimate trademark attacks defend themselves and continue to build their businesses. Such lawsuits can be enormously expensive and serve to financially overwhelm defendants, regardless of the validity of the claims, according to legal analysts.
One legal expert whose research is prominently featured on the website is Kenneth Port, professor of law at the William Mitchell College of Law in St. Paul, Minn. Prof. Port is working with legislators in Minnesota on proposed legislation that would protect defendants in part by forcing plaintiffs to pay all legal costs in the event their suits are defeated or dismissed.
Companies defend their intellectual property all the time, Prof. Port says, but it becomes bullying when they do so without legitimate legal standing by asserting trademark rights beyond what trademark doctrine would recognize.
"It's like extortion," Prof. Port says. "It is bullying when you are using litigation to enforce rights for a trademark that the law says you don't reasonably have."
Prof. Port's research finds that about 3,600 trademark cases are filed each year, but only 1.3 percent of those actions ever make their way to trial. Those who decide to push their legal fight can face enormous expense, costs that are usually well outside their financial ability to sustain the effort.
One such victim is Lorenzo Borghese, founder of www.trademarkbullying.org. The Borghese family is well-known internationally, with a rich family history that includes Pope Paul V and Paolina Bonaparte Borghese, the sister of Napoleon. Lorenzo Borghese is an American entrepreneur who built a pet-care brand called Royal Treatment Italian Pet Spa.
Borghese, who lives in New York City and also starred in the 2006 season of ABC's "The Bachelor," has used his family's long history in appearances on television to promote his animal products. He also filed a trademark to sell a line called Prince Lorenzo Borghese's La Dolce Vita.
But Borghese has become enmeshed in a protracted legal battle over the use of the family name, for years synonymous with lines of cosmetics. Borghese Inc. was sold in 1992 to brothers belonging to the royal family of Saudi Arabia. The Saudi family, along with wealthy Park Avenue socialite Georgette Mosbacher -- Borghese Inc.'s current CEO-- sued Lorenzo Borghese and members of his family in 2010, claiming trademark infringement.
Borghese estimates that he and his family have spent $4 million so far in legal fees fighting the Saudis and Mosbacher. The case still has not gone to trial.
"I don't think you can ever say I can't use my name or my family can't use my name," he says. "It's the principle."
Prof. Port calls the Borghese situation a "classic" case of trademark bullying because at issue are two products – cosmetics and pet care – that no one could confuse in the marketplace as being related.
"These are not products that are ever going to compete with one another," he says. "And with no competition, you don't have infringement."
Contact: Ray Pellecchia (845) 245-8138
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