Ipls trademark speech slides
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Ipls trademark speech slides
- 1. Trademark Law 101 Steven Espenshade Erik Combs February 24, 2015 1
- 2. A Trademark is an IdentityIdentity 2 ®® The main purpose of a trademark is to identify and distinguish the source of a product from that of other products . . . just like your own name identifies and distinguishes you. TMTM Trademarks become valuable when the reputation associated with a mark becomes ingrained in consumers’ minds and designates a single source.
- 3. What can be a Trademark? • Words: BEVO, DELL – Slogans: • A Diamond is Forever • Hook ‘Em Horns • Letters and/or Numbers: UT, 365 EVERYDAY • Logos • Designs 3
- 4. What can be a Trademark? • Packages (“Trade Dress”) – Coca-Cola bottle, H2Orange bottle • Personal Names – Stevie Ray Vaughan® • Nicknames – Johnny Football™ • Buildings – The UT Tower • Colors – Pink for insulation • Smells – Chanel perfume • Sounds – MGM tiger roar 4
- 5. Types of Trademarks • Trademarks are generally classified on a scale of distinctiveness as one of five different types: – Fanciful – Arbitrary – Suggestive – Descriptive – Generic 5
- 6. Fanciful Marks 6 Fanciful marks are coined or “made-up” terms that have no dictionary meaning
- 7. Arbitrary Marks 7 Real words with no meaning in relation to the products or services with which they are used
- 8. Suggestive Marks 8 Marks that suggest, but do not go so far as to describe actual goods or services or their characteristics
- 9. Descriptive Marks 9 • Marks identifying a characteristic or quality of the goods or services with which they are used • Not registrable on the Principal Register without a showing of acquired distinctiveness, but could be on the Supplemental Register SEAR ‘N SMOKE WRING ‘N LOCK
- 10. Generic Terms 10 The common name of the article or service to which it applies cellophane aspirin thermos escalator
- 11. 11 What You Should NOT Do with Trademarks • Trademarks should not be altered in any shape or form
- 12. 12 Trademarks are Adjectives • Trademarks are always adjectives and should be followed by nouns • Trademarks are never nouns or verbs, and in general should not be used alone. • Trademarks should be followed by a generic term: Chapstick®® Lip BalmLip Balm Post-ItPost-It®® NotesNotes
- 13. 13 Which of the Following Uses of the Trademark are Correct? • 1- I need to buy a Band-Aid® • 2- I need to buy Band-Aids® • 3- I need to buy Band-Aid® bandages • 4- I need to Band-Aid® my cut • 5- How much do the Band-Aids® cost?
- 14. 14 • 1- I need to buy a Band-Aid® . • 2- I need to buy Band-Aids® . • 3- I need to buy Band-Aid® bandages. • 4- I need to Band-Aid® my cut. • 5- How much do the Band-Aids® cost?
- 15. 15 Why is it important to use a mark properly? • Trademark rights can be lost through improper use … – A trademark owner’s advertising and labeling mistakes – Misuse by the public - Escalator – By being used as a generic term by the public, the trademark became the name of the product instead of denoting the brand of the product
- 16. 16 QUIZ: Which of the Following Used to be Registered Trademarks? •• NylonNylon • Linoleum• Linoleum •• KeroseneKerosene • Hoagie• Hoagie •• TrampolineTrampoline • Aerobics• Aerobics •• ZipperZipper • Super Glue• Super Glue •• ColaCola • Yo-Yo• Yo-Yo •• AspirinAspirin • Jujubes• Jujubes
- 17. 17 ALL of them!
- 18. Trademark Law Practice- Transactional • Trademark Clearance • Filing and Prosecuting Trademark Applications • Maintenance of Trademark Registrations • Licensing 07/22/16 18
- 19. Trademark Clearance • When Is Clearing a Trademark Important? – Defensive • Can the mark/term be used safely or with acceptable risk? – Offensive • Can the mark be “owned” and enforced against others? 07/22/16 19
- 20. • Determine if the mark is inherently registrable • Conduct a preliminary search for each mark/term • Conduct a full search for the best mark(s) looking for prior users/registrants of same or confusingly similar marks • Interpret, acquire, resolve issues • Get an availability opinion
- 21. Filing and Prosecuting Trademark Application • U.S. Registration – Application provides “constructive use”; nationwide priority – Federal trademark registration does not vest rights – Federal registration provides constructive notice, legal presumptions (mark is valid, etc.) – Use of ® – With use, federal trademark rights can endure forever 07/22/16 21
- 22. Principal versus Supplemental Register – Supplemental Register is for descriptive marks capable of acquiring distinctiveness – Benefits of the Supplemental Register: • Can use the ® • Prevents others from registering confusingly similar marks • Deters others from adopting similar marks because length of time it takes to acquire distinctiveness varies greatly • Requires use of the mark - no intent to use on the Supplemental Register – Disadvantage of the Supplemental Register: • Difficult to take action against another using the same mark • Registration cannot become incontestable 22
- 23. Filing a Trademark Application • Information & Materials Required: – Mark to be registered (standard character v. stylized/design mark) – Owner information – Description of Goods and Services – Filing Basis: • Use in Commerce, Intent-to-Use, Foreign Registration – Date of First Use / Specimen - Use based only – Signed Affidavit 07/22/16 23
- 24. Prosecuting a Trademark Application • Examination by Examining Attorney at USPTO. • Substantive Refusal to Register: – Likelihood of confusion: • ALAMO DRAFTHOUSE CINEMA v. ALAMO CAFÉ • MONDO (posters, shirts) v. MONDO (musical records for children) – Mere Descriptiveness: • ENERGY CRUNCH for trail-mix • RAINFOREST PARTNERSHIP for charitable services relating to rainforests. 07/22/16 24
- 25. Prosecuting a Trademark Application • Other Grounds for Substantive Refusal: – Primarily Geographically Descriptive • WESTLAKE MEDICAL CENTER – Deceptively Misdescriptive • BLACK FLEECE for “various clothing items ‘not made of fleece fabric’” – Primarily Merely a Surname • ACTON SCHOOL OF BUSINESS – Scandalous / Disparaging • I BANGED BETTY • REDSKINS; SQUAW 07/22/16 25
- 26. Prosecuting a Trademark Application • Grounds for Non-substantive Refusal: – Disclaimer – Objection to description of goods/services – Objection to submitted specimen • Ornamental / Does Not Function as a Trademark – Objection to submitted description of mark – Application unsigned – Entity information unclear 07/22/16 26
- 27. Prosecuting a Trademark Application • After Examination – Remaining Steps: – Publication for Opposition – Statement of Use if Intent To Use Application – Registration 07/22/16 27
- 28. Maintenance of Trademark Registration • “Section 8” Declaration of Use filed between the fifth and sixth year of registration • “Section 9” Renewal filed on the 10-year anniversary of registration • Additional filing each 10-year anniversary thereafter • Section 15 Declaration of Incontestability after 5 years of continuous use 07/22/16 28
- 30. Licensing • Must have Quality Control • Scope of Permitted Use, Term, Royalties, Phase-Out, Warranties, Indemnities • May Include Other Rights – Copyrights, Broadcast Rights, etc. 07/22/16 30
- 31. Trademark Infringement and Dilution in the U.S. • Standard for trademark infringement: Likelihood of Confusion – Analysis of various factors including similarity of marks, similarity of products, trade channels, strength of the mark, level of fame, etc. – Litigation is expensive and attorneys’ fees rarely awarded • Standard for trademark dilution: Likelihood of Dilution – Owner of a famous trademark entitled to injunction against another’s use beginning after owner’s mark became famous, if use is likely to cause dilution of the distinctive quality of the mark – Applies even if the goods or services are completely different 31
- 32. Trademark Law Practice- Policing • A trademark owner has a duty to actively police its trademark: – Unchallenged third party uses of a trademark can weaken the strength of a trademark as an identifier of the owner’s goods or services, which in turn weakens the owner’s ability to later enforce the trademark and devalues the worth of the mark. 07/22/16 32
- 33. Trademark Law Practice- Policing • Monitoring Service, i.e. Watch Notices – What to watch: Marks/domain names – Scope: Worldwide/ specific countries • Client/employee observations 07/22/16 33
- 34. Trademark Policing Considerations: – Where has the client established rights? Does client intend to enter the market in question? – Where is the potential infringer applying for/using the mark at issue? – General likelihood of confusion analysis (similarity of marks, relatedness of goods or services, channels of trade, dilution of terms) – Local practice 07/22/16 34
- 35. Trademark Policing- Taking Action – First step: • Cease and Desist Letter • Notice of Rights Letter – Second step: • Consent Agreement • Opposition • Cancellation • UDRP complaint – Third step • Lawsuit 07/22/16 35
- 36. Trademark Policing • Level of policing/enforcement varies by client. 07/22/16 36 163163(That’s a TTAB filing every 1.75 days) From January 1, 2009 through October 12, 2009
- 40. Trademark Law Practice- Litigation 07/22/16 40 UMAMI?
- 41. Trademark Law Practice- Litigation 07/22/16 41
- 42. Questions & Answers The End… 42
Editor's Notes
- The selection of a mark involves many considerations. Because the nature of the mark chosen can have significant legal implications with respect to its subsequent protection, it is important to understand the different types of terms that may be chosen as marks.
- Fanciful marks are coined or “made-up” terms that have no dictionary meaning. The trademark owners invented these terms to identify the source of their products and they have no other meaning in the marketplace. These are strong marks and the easiest marks to protect, but can be the most expensive to promote. These marks are entitled to a broad scope of protection because there is no reason for any other party to use the terms.
- Arbitrary marks are words found in the language (or dictionary), but they have no meaning in relation to the products or services with which they are used. For example, STORK CLUB nightclub did not provide services to storks or target customers who like storks and, therefore, is considered an arbitrary mark. Stork Restaurant v. Sahati, 166 F.2d 348, 355 (9th Cir. 1948). Similarly, APPLE for computers is arbitrary because apples are not associated with computers, and DOVE is a type of bird, so use of the mark DOVE on soap is arbitrary. Note that DOVE does not offer as broad a scope of protection as does a fanciful mark, since DOVE is also a well-known trademark for ice cream. It is sometimes seen as a disadvantage to have a mark that is not at least suggestive of the product or service, or of qualities of the product or service. In the early life of an arbitrary or fanciful mark, more money and more effort are usually required to develop its recognition among consumers than would be required for a suggestive mark.
- COPPERTONE, BURGER KING, CHICKEN OF THE SEA, CITIBANK, ORANGE CRUSH, Q-TIPS, HAMBURGER HELPER... Suggestive marks are ones that suggest, but do not go so far as to describe, either the goods or services or some characteristic of the goods or services. Suggestive marks require the consumer to use some imagination or hindsight in order to understand the connection with the goods or services. Suggestive marks are self-advertisers of a sort, and this makes them easier to promote than arbitrary or fanciful marks. However, suggestive marks generally are subject to more conflict than arbitrary marks, and may be afforded a narrower scope of protection. Thus, while the fanciful mark KODAK has no competition from any mark similar to it, BURGER KING must endure competition from BURGER CHEF and quite a number of other fast food restaurants that feature a play upon the word BURGER, thereby detracting from the strength that might otherwise attach to the mark.
- BEEF & BREW restaurant, CHAP STICK, RAISIN BRAN, FORD, TENDER VITTLES, HOLIDAY INN... Descriptive marks are ones that identify a characteristic or quality of the goods or services with which they are used. Descriptive words are typically not granted trademark protection because every competitor should be allowed to use words that describe the nature of its product. A descriptive term (surnames and geographic terms are treated as descriptive for trademark purposes) may sometimes function as a mark, but only where it can be shown that, through extensive and exclusive use, advertising, promotion, and the like, the term has become associated in the minds of customers and potential customers with goods or services coming from a single source. This mental association is sometimes called “secondary meaning.” Establishment of secondary meaning in a descriptive term can sometimes be quite expensive, but with a liberal advertising budget it is usually achievable. For example, FORD for automotive products and McDONALD’S for fast food restaurant products and services are marks that have acquired secondary meaning. The protection available for such marks is less certain and less secure than that afforded to arbitrary or suggestive terms, and descriptive marks, therefore, sometimes receive narrow protection. Rights which are based on the development of secondary meaning in a descriptive term cannot be relied upon to stop a competitor from making legitimate use of that term in its primary, descriptive sense. For example, a competitor of POST RAISIN BRAN cannot be stopped from using the terms RAISIN and BRAN to describe their cereal.
- automobile, insecticide, shoe store, hotel, candy... Finally, a generic term is the common name of the article or service to which it applies. Generic terms are not capable of acquiring secondary meaning when they are used in their generic sense, and thus are not protectable as marks when they are so used. Sometimes words that start out as trademarks become, through improper use and a lack of diligence on the part of the owner, the generic term of the products (e.g., cellophane, aspirin and escalator). Sometimes a trademark is so popular that it is in danger of becoming a generic term and trademark owners must take steps to prevent what is called “genericide.” XEROX was once faced with combating trademark genericide.