Protecting your brand within budget


Published on

Trademarks are a vital IP tool for every business. In this overview, counsel Alison Carlson provides an end-to-end overview of trademarks—how to obtain, use, manage and defend them to maximize your business' brand without breaking the bank.

Published in: Business, Technology
1 Like
  • Be the first to comment

No Downloads
Total views
On SlideShare
From Embeds
Number of Embeds
Embeds 0
No embeds

No notes for slide

Protecting your brand within budget

  1. 1. Protecting Your Brand Within Budget CLE Seminar for In-House Counsel June 24, 2014 St. Louis, MO Alison Carlson Counsel, New York +1 212 632 5504
  2. 2. 2
  3. 3. Introduction: Different Types of Marks
  4. 4. What is a Trademark? • A source indicator • Distinguishes good/services from others What Else Does a Trademark Do? • Assures consumers of the quality of the goods • Creates business goodwill and brand awareness 4
  5. 5. Types of Marks (Traditional) Word 5
  6. 6. Types of Marks (Traditional) Symbol 6
  7. 7. Types of Marks (Traditional) Slogan 7
  8. 8. Types of Marks (Traditional) Product or Packaging Design 8
  9. 9. Types of Marks (Nontraditional) Sound 9
  10. 10. Types of Marks (Nontraditional) Color 10
  11. 11. Types of Marks (Nontraditional) "Cherry" U.S. Reg. No. 2,463,044 for "synthetic lubricants for high performance racing and recreational vehicles." Fragrance 11
  12. 12. Types of Marks (Nontraditional) Design of a business establishment 12
  13. 13. Types of Marks (Nontraditional) Motion 13
  14. 14. Types of Marks (Nontraditional) Shapes 14
  15. 15. How Does One Acquire Trademark Rights? • Use • US recognizes common law rights • Registration • Some foreign jurisdictions have first to file rules 15
  16. 16. How to Demonstrate Trademark Rights ® ____________ is a trademark/service of __________ ™ SM 16
  17. 17. Trademark Selection and Clearance: Minimizing Costs
  18. 18. Selecting an Appropriate Trademark • The Best Marks • Fanciful, arbitrary or suggestive marks, such as KODAK, APPLE (for computers), or MICROSOFT (suggestive of software for computers) • Average Marks are Weak Marks • Merely descriptive, geographic or personal name marks, such as AMERICAN AIRLINES for an airline, CHICAGO for pizza, and SMITH SHOES • Generic Words are Never Eligible for Trademark Protection • Modem or Email 18
  19. 19. Distinctive Spectrum Generic Descriptive Suggestive Arbitrary Fanciful Email less distinctive more distinctive 19
  20. 20. Selecting an Appropriate Trademark Two Common Errors: • Selecting weak marks for adoption and use • Failing to properly "clear" marks for adoption and use 20
  21. 21. 21
  22. 22. Rule No. 1: Don't Let the Inmates Run the Asylum 22
  23. 23. Manage Your Marketing Team • Eliminate generic/descriptive trademarks off the bat • Screen out bad trademarks • Limit the number of proposed trademarks to be cleared by outside counsel • Set up an internal process to prioritize and manage potential trademarks • Conduct basic searches on the USPTO website and Google to eliminate direct hits 23
  24. 24. Rule No. 2: Conduct In-House Searches 24
  25. 25. 25
  26. 26. Rule No. 2: Conduct In-House Searches (continued) • Can pull up direct hits • Other common law uses 26
  27. 27. Rule No. 3: Know How and When to Effectively Use Outside Counsel • Additional preliminary knock-out searches • Full trademark searches (especially for graphics or design marks) • Formal clearance opinions 27
  28. 28. Clearing a Trademark - Why? • To determine if prior conflicting rights exist • To reduce the likelihood of infringement • To gauge the likely distinctiveness of the mark 28
  29. 29. Developing A Trademark Registration Strategy
  30. 30. US Registrations • Use based applications • Date of first use • Date of first use in commerce • Intent to Use applications (ITUs) • Constructive date is date of filing 30
  31. 31. When to file an ITU • When you are not using the mark, but intend to do so within six months • When you are not sure the brand will go forward or stick, but want the earliest date of first use • When you don't have actual specimens • ITUs are more expensive (additional fee for extensions to perfect use) 31
  32. 32. Beware: Not All US Registrations are Created Equal • The USPTO is authorized to register eligible trademarks on two separate and very different registers: • Principal Register • Supplemental Register • The different registers separate strong marks from weak marks 32
  33. 33. The Principal Register • Trademarks registered on the Principal Register are fully capable of trademark significance at the time of registration. • Fanciful Marks • Arbitrary Marks • Suggestive Marks • A weak mark that has become strong through secondary meaning • Descriptive mark that has gained recognition through use/advertising (usually five years) 33
  34. 34. The Supplemental Register • The Supplemental Register is reserved for nondistinctive marks that are capable of acquiring distinctiveness (i.e. "secondary meaning") but have not yet done so. • U.S. Reg. No. 3,596,777, ICE ROAD TRUCKERS for "pre-recorded video discs featuring stories of trucking adventures." • U.S. Reg. No. 4,127,121, FLIPPING VEGAS for "an ongoing television series featuring subjects of general human interest." 34
  35. 35. Benefits Common to Principal and Supplemental Registrations 1. Right to use the official symbol "®" as notice of federal registration. 2. Registrations block later-filed applications for confusingly similar marks for related goods. 3. 10-year term. 35
  36. 36. Benefits Unique to the Principal Register 1. Constructive notice nationwide of: • The registrant's ownership of the registered mark • The registrant's priority of use of the mark; and • The mark is effective as of the filing date of the federal application (which can be earlier than the date of the registrant's actual first use in commerce) 2. Right to expand actual use nationwide 3. More "robust" registration with stronger trademark rights 4. Permits recordal with United States Customs Service to block importation of products/materials bearing infringing/counterfeit trademarks 36
  37. 37. Benefits Unique to the Principal Register 5. The registration creates an evidentiary presumption that the trademark is "distinctive" rather than "descriptive". 6. The registration is prima facie evidence that the: • Trademark is valid (i.e., eligible subject matter, complies with all legal requirements, operates as a trademark, not abandoned) • Registrant is the owner of the registered trademark • Registrant has the exclusive rights to use the trademark nationwide 37
  38. 38. Why Supplemental Registration? • Allows marks that otherwise would not be federally protected to enjoy some of the benefits of federal trademark registration • Expedites the registration process through the efficiencies of a simpler internal USPTO examination process • Reduced the likelihood of time-consuming and expensive Office Actions • No oppositions 38
  39. 39. Beware the Limitations 1. No constructive notice nationwide of the registrant's claim of ownership of the registered mark. 2. No constructive use (and priority of use) nationwide of the registered mark effective as of the filing date of the federal application. 3. No evidentiary presumptions. 39
  40. 40. Beware the Limitations 4. No recordal with United States Customs Service permitted. 5. No availability of "incontestability" status. 6. No ITUs. 40
  41. 41. Movement Between Principal and Supplemental Registers • Supplemental to Principal • No • Need to file new application (5 years) • Principal to Supplemental • Permitted BEFORE the Principal Register application becomes abandoned or has its rejection affirmed on appeal, provided that use of the mark in commerce has commenced as of the time of the amendment. • Examiner's suggestion 41
  42. 42. The Bottom Line Supplemental Registration is a second-best alternative to Principal Registration BUT may be the only and therefore best alternative for some marks. 42
  43. 43. Select Territories for Registration • Select registration in those countries in which the company will make use of the mark directly or by licensing the mark to a third party 43
  44. 44. Where to Register Your Trademark • A majority of countries have first-to-file vs. first-to-use trademark priority systems. • Some countries with a first-to-file for registration system are: • China • France • Germany • Japan • Korea • A first-to-file for registration system means registration is a necessity. 44
  45. 45. Multi-Country Registration Systems • The European Community Trademark (CTM) • Madrid Protocol and Madrid Agreement (WIPO) • The African Regional Intellectual Property Organization (ARIPO) 45
  46. 46. Proper Use of Trademarks
  47. 47. Common Mistakes Resulting in Loss of Rights • Improper Use • Genericide • Non-use 47
  48. 48. "ACID" Test for Proper Use Adjective Consistent Identification or status Distinguished from other text 48
  49. 49. Trademarks are Proper Adjectives • All trademarks are proper adjectives • Trademarks should be followed by a generic term and/or the word "brand": • Kleenex® tissue • Ford® truck • Tums® brand chewable tablets • iTunes® application 49
  50. 50. Trademarks Should Not be Altered Trademarks should always be used in the same form in the marketplace and should never be altered. 50
  51. 51. Always Use Proper Trademark Form and Spelling • Do not deviate from the established registered spelling. MONTBLANC® fountain pen, not MONT BLANC 51
  52. 52. Trademarks Should Not be Pluralized • Instead, pluralize the generic term that the trademark describes. INCORRECT: Five Milk-Bones CORRECT: Five Milk-Bone® dog snacks 52
  53. 53. Trademarks Should Not be Singularized • Do not remove the "s" to singularize these marks. INCORRECT: A Hershey's Kiss chocolate CORRECT: A Hershey's Kisses® chocolate 53
  54. 54. Trademarks Should Not be Used as Verbs INCORRECT: • Can you Xerox the report? • Do you want to go Rollerblading? • Google a good place to eat tonight. CORRECT: • Could you make a Xerox® copy of the report? • I would like to go Rollerblade® skating. • Do a Google® search for a good place to eat tonight. 54
  55. 55. Identify Your Trademarks (Written Materials) Trademarks should be marked or offset from the surrounding text: ® or ™ Symbol: Starbucks® coffee All capital letters: KLEENEX tissue Quotation marks: "Life Savers" candy Initial capital letter: Crayola crayons Italics: Subway sandwich Boldface: Pampers diaper 55
  56. 56. Which of the Following were Initially Registered Trademarks? • Kerosene • Trampoline • Zipper • Escalator • Cellophane • Aerobics • Super Glue • Yo-Yo • Aspirin 56
  57. 57. 57
  58. 58. Non-Use Failure to renew Non-use Failure to police Cancellation Common Law Rights "Use it or lose it" 58
  59. 59. Other Ways to Lose Your Rights Registered Rights Failure to file Section 8 and 15 affidavits Failure to renew Non-use Failure to police 59
  60. 60. Improper Assignment or Licensing Failure to renew Non-use Failure to police Cancellation • It's all about quality control • Assignment in gross 60
  61. 61. Protecting Your Trademark
  62. 62. The Importance of Having an Ongoing Enforcement Program • To establish a benchmark for monitoring infringement • To be consistent in enforcement efforts • To put infringers on notice • To prevent loss of trademark rights 62
  63. 63. Policing and Protecting Trademarks in the U.S. • Internet searches • Sources such as newspapers, magazines, journals, company name registries, etc. (common law uses) • Internal "eyes and ears" • Use your interns • Subscribe to watch services 63
  64. 64. Tools for Monitoring and Protection of Trademarks Internationally • Country-specific or worldwide trademark watching • Watch for publication of trademark registration applications around the world • Most watch providers offer electronic reporting of watch notices for easier and quicker review 64
  65. 65. Virtual Protection: Tools for Monitoring and Protecting Brands
  66. 66. Rights violations on the Internet, in social media or via mobile applications • Trademark infringement • Copyright infringement • Counterfeit / pirate goods • False / misleading advertising • Cybersquatting and typosquatting • Violation of the right of publicity / privacy • Slander, libel, disparagement 66
  67. 67. Considerations as to whether to enforce • Volume and costs • Not feasible to stop every potential infringement • Need to prioritize • Consider • Potential harm vs. risk of irritating fan base (social media) • Is the act fair use or borderline? • Is it a clear case of infringement? 67
  68. 68. Expedient Enforcement Options • Take-down requests / complaints • Each platform differs in policies and procedures • Popular social media platforms and online marketplaces: • Ebay • Facebook • Google • You Tube • LinkedIn • Amazon 68
  69. 69. Traditional Means for Resolving Domain Name Disputes • Uniform Domain-Name Dispute-Resolution Policy (UDRP) • Anticybersquatting Consumer Protection Act 1999 (ACPA) 69
  70. 70. Uniform Domain-Name Dispute-Resolution Policy (UDRP) • International arbitration process for resolution of domain name disputes adopted by ICANN. • Administrative alternative to going to the courts. 70
  71. 71. UDRP Procedure • Complaint filed • Response due (within 20 days) • 1 or 3 panelist(s) appointed • Decision due (within 14 days) • Approximately 45 days • Decision forwarded to parties, ICANN and registrar (within 3 days) • Decision implemented by registrar (cancellation or transfer) • Designed to be used with or without legal assistance 71
  72. 72. UDRP Policy Complaint requirements • Same or confusingly similar trademarks • No legitimate interest in the domain name • Bad faith registration and use of the domain name by registrant 72
  73. 73. Anticybersquatting Consumer Protection Act (ACPA) • Federal law that provides trademark owners with a civil remedy against cybersquatting • Cybersquatting is defined as "registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else" 73
  74. 74. ACPA Requirements • The mark is valid • The owner registered the domain name in bad faith in order to profit from the mark • The mark was distinctive when the domain name was registered • The domain name is identical or confusingly similar to the mark 74
  75. 75. ACPA Remedies • A court order requiring that the domain name be transferred to the mark owner. • Monetary damages 75
  76. 76. Summary - UDRP vs. ACPA ACPA UDRP Expensive Inexpensive Lengthy proceedings Quick proceedings Uncertain Majority of decisions in favor of complainant Limited to the United States Incorporated globally for certain domains (e.g., .com) Damages Damages are not available 76
  77. 77. Top-Level Domains • Highest level in the domain name system • Generic Top-Level Domains (gTLDs) • Examples: .com, .net, .org • Country-Code Top-Level Domains (ccTLDs) • Examples: .au for Australia, .mx for Mexico 77
  78. 78. New gTLD Names • Examples of new gTLD names: • By brand (.amazon, .dunlop) • Music and arts community (.theather, .band) • Cause (.eco, .charity) • Geographic/cultural area (.nyc, .irish), etc. • The use of non-Latin characters (such as Cyrillic, Arabic, Chinese, etc.) will also be allowed in gTLDS. 78
  79. 79. The Trademark Clearing House ("TCH") 1. Accepts and authenticates information about trademark rights 2. Trademark holders can register with the new TLD during the sunrise period 3. TCH has a notification service (the "Trademark Claims Service") which warns both domain registrants and trademark holders of possible infringements 79
  80. 80. TCH Limitations • It does not prevent an infringer from obtaining an infringing domain name • Exact matches only • No typo squatting • Sound-alikes • Slight variations 80
  81. 81. Who Can File with the TCH? • TM Agents • Trademark Holders 81
  82. 82. Limitations of TCH • Only national and regional marks are eligible for registration • No design marks or graphics elements • Unregistered (common law marks may be eligible) • Court • Statute • Treaty 82
  83. 83. Costs for Registering with TCH • Varies • One-year registration is $150 • Registration of the trademark includes linking up to 10 domain names per registration • 1, 3, 5 year rates • Advanced fee structure • Prepayment account • Discount based on volume 83
  84. 84. Order Domain Name Watches • Thomson Compumark • Corporation Service Company 84
  85. 85. Hire a Blocking Service • Companies running new TLDs allow TCH registered marks to block the use of a domain name for a fee (Domains Protected Marks List (DPMC)) • Donut, Inc. • "Trademark + Keyword" • SFA • "shopsaks" • "sakssucks" • Effective to protect brands from .xxx 85
  86. 86. Uniform Rapid Suspension System (URS) • Lower-cost fast path to relief for brand owner • Must be clear-cut case of infringement • Similar to UDRP, but higher burden of proof • Suspension only • No cancellation or transfer • If denied, no prejudice and proceed with UDRP 86
  87. 87. URS Procedure • Complaint files ($375 for up to 12 domain names) • 500 words • Registrar freezes domain within 24 hours • Response due (within 14 days) • 2,500 words • Decision implemented 87
  88. 88. UDRP or URS? • The URS is not a good choice if: • You want to get the domain name • Respondent has possible legitimate arguments • You only have common law rights • The domain name you want to oppose is not registered in a new gTLD 88
  89. 89. Conclusions / Recommendations • Choose a strong mark • Use the mark correctly • Monitor • Enforce 89
  90. 90. Thank you Alison Carlson Counsel, New York +1 212 632 5504 90
  91. 91. © 2014 Dentons Dentons is an international legal practice providing client services worldwide through its member firms and affiliates. This publication is not designed to provide legal or other advice and you should not take, or refrain from taking, action based on its content. Please see for Legal Notices. Thank you! Alison Carlson Dentons US LLP 1221 Avenue of the Americas, 25th Floor New York, NY 10020