What Every Dietary Supplement Business Should Know About Protecting Brands and Managing Trademark Concerns
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What Every Dietary Supplement Business Should Know About Protecting Brands and Managing Trademark Concerns

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Presentation to dietary supplement industry on practical aspects of trademark law including the methodologies for effectively developing and protecting brands in today\'s marketplace.

Presentation to dietary supplement industry on practical aspects of trademark law including the methodologies for effectively developing and protecting brands in today\'s marketplace.

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What Every Dietary Supplement Business Should Know About Protecting Brands and Managing Trademark Concerns What Every Dietary Supplement Business Should Know About Protecting Brands and Managing Trademark Concerns Presentation Transcript

  • Capture Your IP: Developing and Perfecting Your Know What Every Dietary Supplement Business Should Invention Disclosure Program What Every Dietary Supplement Business Should Know About Protecting Brands and Managing Trademark Concerns PRESENTED BY: Michael E. Mangelson Catherine P. Lake Joshua G. Gigger Seminar 4 • Tuesday, July 21, 2009 Series 3 • Seminar 4 3 Thursday, May 28, 2009 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Overview • What is a trademark? • Selecting and clearing trademarks. • Protecting trademarks through registration. • Protecting trademarks through proper use. • Protecting trademarks through enforcement. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Branding-Why Trademarks Matter Branding- Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know What is a Trademark? • Any word, name, symbol, or device, or any combination thereof, used to distinguish goods and identify the source of goods. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Trademark–Examples • Words: USANA XANGO SCHIFF • Designs: • Word/Design Combinations: Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Trademark–Examples Packaging: Color, Sound, Fragrance: Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Building Strong Trademarks Involves Three Steps: 1. Select an appropriate mark. 2. Register the mark. 3. Protect the mark through proper use and enforcement. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Selecting Trademarks 1. Identify a distinctive mark. 2. Clear marks through trademark searches. 3. Do not use marks that are not truthful, that are misleading, or that have unsubstantiated product claims. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Selecting Trademarks–Distinctive Marks Trademarks– A mark must be distinctive (inherently or acquired through use) to be protectable. For the strongest legal protection, select distinctive marks without descriptive, surname or geographic connotations. Least Most distinctive distinctive Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Selecting Trademarks–Searching and Clearing Trademarks– Trademarks Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Selecting Trademarks– Trademarks– Searching and Clearing Trademarks • Goal: eliminate marks that are confusingly similar to or that dilute third-party marks. • Factors to analyze: - similarities of sound, appearance, and meaning. - relationship between the marks’ products or services and channels of trade. - sophistication of customers. - strength and fame of marks. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Selecting Trademarks– Trademarks– Searching and Clearing Trademarks 1. Conduct preliminary “knock-out” screening. – USPTO database at http://www.uspto.gov (no state, common law, or foreign records). – Third-party databases such as SAEGIS and Dialog (includes federal, state, and some foreign searching). – Internet search engines, yellow pages, WHOIS registries, and state databases. – Trade/industry directories and telephone books. 2. Engage counsel to search federal and state records, including registrations, pending and abandoned applications, and expired and canceled registrations. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Selecting Trademarks– Trademarks– Searching and Clearing Trademarks 3. Order full “common law” search by commercial search firm (e.g., Thomson CompuMark). 4. Order international search (if foreign use is anticipated). 5. Obtain counsel to evaluate search reports and provide opinion regarding risks. 6. Investigate abandoned applications, canceled or expired registrations, owner of potentially conflicting mark, and USPTO status information and prosecution history for applications and registrations to determine availability of mark in the marketplace. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Selecting Trademarks– Trademarks– Searching and Clearing Trademarks 7. Avoid unacceptable risks by – Abandoning mark. – Purchasing conflicting mark. – Obtaining consent or license to use conflicting mark. – Filing petition to cancel conflicting mark (e.g., if mark is abandoned). – Filing federal intent-to-use trademark application. in advance of use to determine registerability and possible opposition by a third party. Series 3 • Seminar 4 Tuesday, July 21, 2009 Salt Lake-308824
  • What Every Dietary Supplement Business Should Know Selecting Trademarks– Trademarks– Deceptive Claims • FDA has primary responsibility for claims on dietary supplement product labeling, including packaging, inserts, and other promotional materials distributed at the point of sale. • FTC has primary responsibility for claims in advertising, including print and broadcast ads, infomercials, catalogs, and similar direct marketing materials. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Selecting Trademarks– Trademarks– Deceptive Claims FTC’s Truth-In-Advertising law requires: 1. Truthful and not misleading advertising. 2. Adequate substantiation for all objective product claims. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Selecting Trademarks– Trademarks– Deceptive Claims • Ad for a product called “Cold Away” - Carefully evaluate whether mark expressly or impliedly makes a health claim. - Must substantiate that the product helps prevent colds COLD AWAY Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Protecting Trademarks Through Registration Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know What Are the Benefits of Federal Trademark Registration? Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Benefits of Federal Trademark Registration • Legal presumption of the registrant’s ownership of the mark, and the registrant’s exclusive right to use the mark nationwide. • Constructive notice to the public of the registrant’s claim of ownership of the mark. • Ability to bring an action concerning the mark in federal court. • U.S. registration can be used as a basis to obtain registration in foreign countries. • Ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Benefits of Federal Trademark Registration– Help from U.S. Customs • Register trademarked goods with U.S. Customs. – U.S. Customs will monitor ports and seize counterfeits. – Provides enhanced penalties: fines and jail time. – 2005: $93M in counterfeit goods seized. – 2006: $155M in counterfeit goods seized. – 2007: $200M in counterfeit goods seized. – 2008: $272.7M in counterfeit goods seized. – Online form and $190 filing fee. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know The Federal Registration Process • File an application based on actual or intended use. • Application must include description of goods. • Applicant must pay filing fee. • Application is examined by USPTO. • Application is published for opposition in the Official Gazette. • Registration is valid for 10 years. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Does a Trademark Need to Be Registered Before It Can Be Protected? Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Does a Trademark Need to Be Registered Before It Can Be Protected? • Federal registration is not necessary to establish rights in a trademark. • “Common law” rights arise from use of a mark. • Generally, the first to either use a mark in commerce or file an intent-to-use application with the USPTO has the ultimate right to use and registration. • However, there are many benefits of federal trademark registration. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Dangers of Failing to Register Senior user Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Dangers of Failing to Register Senior user Innocent junior user registers Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Dangers of Failing to Register Senior user’s territory frozen from time junior user registered Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Marks Not Allowed Registration • Immoral, scandalous, or deceptive marks. • U.S., state, or foreign flag. • Names of living individuals (without permission). • Olympic designations. • Descriptive or misdescriptive marks. • Marks similar to marks already registered. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Is a Federal Trademark Registration Valid Outside the United States? Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Is a Federal Trademark Registration Valid Outside the United States? • No. Certain countries, however, do recognize a U.S. registration as a basis for registering the mark in those countries. Many countries maintain a register of trademarks. The laws of each country regarding registration must be consulted. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know International Issues • Federal registration does not give international protection. • First to use vs. first to register. • Paris Convention - a U.S. applicant can claim date of U.S. application as priority date for foreign protection if applicant files in foreign country within six months of U.S. filing date. • Community trademark registration-27 countries in the European Union. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know International Issues • Madrid Protocol - allows a U.S. applicant to seek registration in any of the member countries by filing one application with the USPTO and designating as many member countries as it chooses. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know International Issues • Be careful how you describe and classify your products in trademark applications. • In the U.S., dietary supplement products can be classified with conventional foods in classes 29, 30, 31 and 32, but class 5 is the most common classification. • Some foreign examiners view tablet products, and herbal and other supplements as medicinal products, and require the addition of “for medical purposes” to class 5 descriptions. • May have to protect supplements in classes 29, 30, or 32, or work with trademark counsel to craft alternative acceptable descriptions (e.g., dietary supplement “adapted for medical purposes excluding preparations intended to diagnose, treat, cure or prevent any disease.”). Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Protecting Trademarks Through Proper Use Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Trademark Use Guidelines • Use marks consistently – create brand use guidelines. • Always use marks as an adjective (e.g., ONE A DAY® vitamins). • Emphasize the marks (e.g., ONE A DAY® brand vitamins). • Do not pluralize or make a mark possessive (e.g., BURGER KING® restaurants or BURGER KING® restaurant’s). • Use proper trademark notices. - e.g., use ® if mark is registered, TM for an unregistered mark, and SM for an unregistered service mark. - e.g., “ONE A DAY is a trademark or registered trademark of Bayer Healthcare LLC.” • Monitor use of trademarks. • Failure to use properly may result in loss of rights in the mark. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Fighting “Genericide” ASPIRIN Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Additional Ways to Weaken or Lose Trademark Rights • Abandonment. • Assignment without goodwill (assignment in gross). • License without quality control (naked license). • Failure to police and stop infringement. • Fraud. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Protecting Marks Through Enforcement Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Trademark Protection and Enforcement • Monitor third-party registration and use. • Demand letters. • Opposition and cancellation proceedings. • Trademark infringement litigation. • UDRP and ACPA. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Trademark Protection and Enforcement • Monitor third party registration and use. • Demand letters. • Opposition and cancellation proceedings. • Trademark infringement litigation. • UDRP and ACPA. Series 3 • Seminar 4 Tuesday, July 21, 2009
  • What Every Dietary Supplement Business Should Know Thank You Michael E. Mangelson (memangelson@stoel.com) Catherine Parrish Lake (cplake@stoel.com) Joshua G. Gigger (jgigger@stoel.com) Series 3 • Seminar 4 Tuesday, July 21, 2009