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Trade Mark Trolls & Trolling: What you need to know

Trade mark ‘trolling’ is a relatively new and unexplored concept in the intellectual property and commercial world. But behind it lurks some very real and concerning activities!

Basically, a trade mark troll is a term used for any entity or individual that attempts to register a trade mark without intending to use it and who then threatens to sue others who use that mark. The ‘troll’ typically registers the name of an existing business as a trade mark, then demands cash to lease or sell it back to the original company.

As a traditional troll is said to collect a toll from those trying to cross a bridge, a trade mark troll "magically appears when an unsuspecting producer adopts the same or similar mark and poses upon them two choices: pay to get a license to use my mark or litigate".[1] Both can be very costly options indeed.

For instance, if a company is getting ready to launch a new product and the word of this got out – including the name – then a trade mark ‘troll’ would try to register the trade mark, the domain name, the Google AdWords® and even set up a fake company and website to assert prior rights over the trade mark.

Are there types of trade mark ‘trolls’?

Trade mark trolls appear to fall into three broad categories:

  • Those who register trade marks speculatively, do not use them, but look to deploy them against traders who later adopt the same name.
  • Those who register trade marks and actually use them but seek to enforce the trade marks more widely than is reasonable, often against parties operating in different sectors.
  • Those who register trade marks for names obviously belonging to a well-known third party, with the clear intention of positioning those marks against the rightful owner.

What does a troll look like?

Mr Leo Stoller is probably the best well known individual who has been labelled as a “trade mark troll”, but he refutes the characterisation, calling himself an‘intellectual property entrepreneur’[2].

Through a number of companies controlled by him, Mr Stoller registered a vast number of trade marks, ranging from ordinary commonly used words to famous brands.[3]

In his ‘glory days’ in the year 2007 he was involved in over 50 US federal district court trade mark infringement actions (Including against Google®).

A list of thousands of proceedings involving Mr Leo Stoller and his companies (Stealth Industries, Inc., Leo Stoller Stealth Industries Inc., Leo Stoller Central Mfg. Co, Central Mfg. Co., Central Mfg. Inc., Sentra Industries Inc.) can be found on the USPTO site.[4]

Is there a troll near you?

Intellectual Property Offices are not resourced to determine whether an applicant has genuine interests or if it is a troll.

As such trolls will exist everywhere there is a perceived opportunity to make‘easy money’, even in the ‘inoffensive’ world of trade marks.

Brand owners need to be proactive as they can’t always count on the courts and Intellectual Property Offices to come to their aid in a fight against a trade mark troll.

Anti - troll tips

  • Always try to conduct a trade mark search and set aside a fighting fund if it reveals a problem.
  • Register your brand as soon as possible in key markets. As we live in a global marketplace, these are more than you might have originally thought.
  • Finally, do not underestimate your common law rights, and ensure that, in order to count on them, you need to keep good, easily accessible, records of use of your trade mark.

Then you should be able to defeat the trolls, if you shall come across them!

If you require any further information or assistance do not hesitate to contact us at fds@fal-lawyers.com.au

By Fabiola Dos Santos

28 May 2013

[1] Anna Folgers, http://www.kentlaw.iit.edu/Documents/Academic%20Programs/7CR/v3-1/folgers.pdf.

[2] In re Leo Stoller, Debtor, no. 05-B-64075 (N.D. Ill., Aug. 8, 2007); Findings of Fact, Conclusions of Law, and Order Approving Sales of Debtor's Assets

[3] For more comprehensive analyses on Stoller, see Banner & Sterba, Intellectual Asset Management,

June/July 2007; and Folgers, Seventh Circuit Review, Vol 3 Issue 1, Fall 2007

[4] www.uspto.gov/