Stealth™ Marketing for Trademark Bullies

Can you own a word, for all intents and purposes? According to a recent article in the Business section of the New York Times, at least one guy with a lot of chutzpah thinks he can.

Mr. Stoller owns and runs a company called Rentamark.com, which offers, among other things, advice on sending cease-and-desist letters and Mr. Stoller's services as an expert witness in trademark trials. Through Rentamark, Mr. Stoller offers licensing agreements for other words he says he owns and controls, such as bootlegger, hoax and chutzpah, and sells t-shirts and other merchandise through what the Web site calls its "stealth mall."

He is currently in a legal dispute with Sony's Columbia Pictures unit over a film that opens late this month. It is about elite Navy pilots and titled - what else? - "Stealth."

Mr. Stoller said he first registered "stealth" as a trademark in 1985 to cover an array of sporting goods. But in recent years, "stealth" has become widely used in marketing and branding circles to bestow a sense of the subliminal or the subversive or to convey an aura of lurking power.

Probably a good name for Stoller; but he's not the only entrepreneur that seems to have developed a reputation for being a trademark bully. In most cases, alleged trademark bullies are big companies that assert absolute ownership of trademarked words for all intents and purposes to keep small businesses and individuals from using those words to describe their goods or services. This is a bit different, inasmuch as this trademark owner is a little guy intent on keeping big companies from using his trademarked words—unless they agree to pay him for the privilege.

Some big guns have come into Stoller's sights. In a case settled in 2001, defense contractor Northrop Grumman agreed to abandon its trademark applications to use "stealth bomber" in spinoff products like model airplanes and video games; Stoller agreed not to oppose Northrop's use of "stealth" in aircraft or defense equipment.

The Times reporter says there doesn't appear to be any Lexis Nexis record of Stoller, a serial litigator, ever winning a case in court to enforce this trademark. But he has convinced some people to back off using the word stealth, and a few have even agreed to pay Rentamark a licensing fee to use the name stealth for their products.

"It's based on a misunderstanding of how trademark law works," said Mark A. Lemley, a professor at Stanford Law School. "Trademark law doesn't give you exclusive rights in words, only the right to prevent consumer confusion. He's not in a position to claim that his mark is unique or famous. It's a common English word that's already been used in many contexts as a trademark by others."

It will be interesting to see what's left of his trademark after the lawyers at Sony get through with him—if they don't settle the case quietly before judgment.