On My Mind Blog

Greenerside Holdings LLC (Applicant) filed an intent-to-use application to register a logo featuring the word mark DOOR DABZ for use in connection with “delivery of medical cannabis solely derived from hemp with a delta-9 tetrahydrocannabinol THC concentration of not more than 0.3 percent on a dry weight basis, using car service.”

Door Dash, Inc. (Opposer) challenged the application claiming that the DOOR DABZ mark was likely to be confused with several DOORDASH marks used and registered in relation to Opposer’s delivery services for food and other goods.

Applicant pleaded various affirmative defenses, all of which were struck by the Trademark Trial and Appeal Board (TTAB) with leave to replead the "non-futile defenses."  Thereafter, Applicant repleaded its “trademark bullying” defense, and Opposer again asked that this defense be stricken.

The TTAB noted that the Trademark Act does not refer to “trademark bullying” explicitly or even implicitly. Rather, “trademark bullying” has been defined by a commentator as conduct by a trademark owner that (1) asserts an “unreasonably inflated view” of the exclusive scope of its mark; (2) is overly aggressive in making demands that are not proportional to the object to conduce; (3) is a sizeable company with substantial assets compared to (4) the smaller business owner accused of using a confusingly similar mark.

Applicant specifically alleged that (1) Opposer had been engaged in “trademark bullying”; (2) Opposer was among the top filers of TTAB proceedings; (3) Opposer previously opposed a “significant number of applications” on “dubious, weak or exaggerated” grounds; (4) Applicant is a small business; and (5) Opposer had unclean hands due to its “longstanding and habitual practice of trademark bullying” and “misuse of trademark.”

The TTAB in previous cases had considered unclean hands affirmative defenses based on allegations of “overzealous enforcement” and the misuse of trademark registrations in violation of the antitrust laws.  But it had rejected these defenses on the ground that the registrant was merely exercising its right to protect its mark from what it believed to be a confusingly similar mark.

In this case, the TTAB rejected this defense once again. It pointed out that, as with any pleading, factual matter must be alleged sufficiently to give rise to the particular defense.  “There must be more than threadbare recitals supported by conclusory statements.”

Accordingly, the TTAB threw out this affirmative defense in this case, and it designated this decision as precedential.  The TTAB also precluded Applicant from repleading this defense a third time.

DoorDash, Inc. v. Greenerside Holdings, LLC, Opposition No. 91285160 (May 23, 2024).

Author’s Note:

This case demonstrates that there is a high hurdle for anyone seeking to assert “trademark bullying” as a defense in a trademark opposition or infringement proceeding. 

Normally, it is permissible for a trademark owner to enforce its rights, and even to test the limits of those rights. 

If an aggrieved defendant chooses to plead “trademark bullying” in defense of a claim, it must allege specific facts of impropriety involving the plaintiff’s trademark.  Even then, this defense generally will not succeed unless the alleged trademark owner either does not own the asserted trademark or uses its trademark in a way that violates the antitrust laws.

For further information, please contact William M. Borchard or your CLL attorney.