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Similar to 15.08.04 BHBA TRADEMARKS 101
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15.08.04 BHBA TRADEMARKS 101
- 1. TRADEMARKS 101 Selection and protection basics for the business attorney Paul D. Supnik Beverly Hills Bar Association August 6, 2015 1
- 2. What is a trademark? What can be a trademark? Words CHEERIOS Slogan DON’T LEAVE HOME WITHOUT IT Logo Design Product Configuration sometimes possible but difficult A Symbol that represents source of goods or services Paul D. Supnik Beverly Hills Bar Association August 6, 2015 2
- 3. More trademarks And more: It’s a Symbol Represents Brand identity Reputation Goodwill Can be Words Design Musical notes Color scheme Paul D. Supnik Beverly Hills Bar Association August 6, 2015 3
- 4. Other Types of Marks Certification Marks GOOD HOUSEKEEPING UL Requires submission of “certification statement” generally setting out the manner in which the applicant controls use of the mark. Generally, the owner of the mark does not use the mark, but only those who are certified by the owner to use the mark. Collective Membership Marks Signifies membership in an organization Collective Trademarks Paul D. Supnik Beverly Hills Bar Association August 6, 2015 4
- 5. Basis of Trademark Rights Common Law Use is the primary basis of trademark rights in the United States Use must be as a mark Appearance in the middle of a novel is not trademark use Front of t-shirt may not be trademark use But may be if ancillary to known entertainment property Inside labels and hangtags work Usually, trademark must be affixed to a product Brochures do not count But service mark need only be used in connection with the offering of services E.g., flyers, brochures, websites Trademark is a mark used in connection with products Service Mark is a mark used in connection with the performance of services Paul D. Supnik Beverly Hills Bar Association August 6, 2015 5
- 6. Territoriality Basic rules of common law trademarks First to use mark in connection with specific goods in specific territory owns the mark Innocent use in remote territory does not prevent remote user from acquiring rights Adoption in remote territory with knowledge of prior user may prevent acquisition of valid rights Although old law, seemingly more important since advent of internet and with the ability of everyone to perform quick and easy searches without much effort Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959) Registered owner of mark cannot stop would be infringer outside of existing territory – must wait until likelihood of entry into competing territory Articulated in early U.S. Supreme Court decisions and frequently referenceds Grupo Gigante SA de CV v. Dallo & Co., 391 F.3d 1088, 1097 (9th Cir. 2004) [P]riority of use in one geographic area within the United States does not necessarily suffice to establish priority in another area. Thus, the first user of a mark will not necessarily be able to stop a subsequent user, where the subsequent user is in an area of the country "remote" from the first user's area. The practical effect is that one user may have priority in one area, while another user has priority over the very same mark in a different area. The point of this doctrine is that in the remote area, where no one is likely to know of the earlier user, it is unlikely that consumers would be confused by the second user's use of the mark. Paul D. Supnik Beverly Hills Bar Association August 6, 2015 6
- 7. Federal Registration Basis for U.S. registration Use Must show actual use at time of filing E.g. images of actual hang tags, labels, point of purchase displays Intent to use Requires bona fide intention to use mark No registration can issue until actual use Foreign registration Use not required at time of U.S. registration Madrid Protocol registration Use not required at time of U.S. registration Usually confirms existing rights based on use Paul D. Supnik Beverly Hills Bar Association August 6, 2015 7
- 8. Why register? Prima facie presumption of ownership of mark Constructive notice of trademark owner’s claim Entry to federal court litigation Permits use of registration symbol with mark (“®”) Prerequisite for statutory damages against counterfeit marks $200,000 for each type of goods $2,000,000 for each type of goods if willful infringement 15 USC 1117(c); counterfeit mark defined at 15 USC 1116(d) May still have a basis for getting into federal court without registration under Section 43(a) of the Lanham Act Paul D. Supnik Beverly Hills Bar Association August 6, 2015 8
- 9. California State Registration Requires actual use prior to applying for registration Does not clearly establish presumptions Provides a nice looking certificate for court May be limited express substantive legal benefit Shows up in more sophisticated trademark searches Shows the court that you have done something with your rights 14272. The intent of this chapter is to provide a system of state trademark registration and protection substantially consistent with the federal system of trademark registration and protection under the Trademark Act of 1946 (15 U.S.C. Sec. 1051 et seq.), as amended. To that end, the construction given the federal act should be examined as nonbinding authority for interpreting and construing this chapter. Provides room for argument Potentially opens the door for substantial remedies Actual search and review by California Secretary of State California B&P Code 14000 et seq. Model State Trademark Law Paul D. Supnik Beverly Hills Bar Association August 6, 2015 9
- 10. Classifications Each class filing is treated as separate application with separate application filing fee Trademark Office has discretion to determine which classes are identified by the goods and services in the application Examples Class 9, DVD’s, computers, iTunes downloads Class 25, clothing Class 41, entertainment services, seminars Everything is classified in close to 50 categories of goods and services Paul D. Supnik Beverly Hills Bar Association August 6, 2015 10
- 11. Selecting a Mark Spectrum of distinctiveness Fanciful KODAK, EXXON Arbitrary APPLE Suggestive MICROSOFT Descriptive SHARP for televisions Generic SWEET for sugar Suggestive marks are initially protectable Descriptive marks require secondary meaning before protection Generic marks are not protectable Paul D. Supnik Beverly Hills Bar Association August 6, 2015 11
- 12. Secondary Meaning Secondary meaning occurs when the public perceives the mark as a brand, rather than its primary meaning Factors considered in determining whether a mark has acquired secondary meaning: Advertising expenditures Sales success Length and exclusivity of use Unsolicited media coverage Consumer studies linking term or design to a particular source Intentional copying The Trademark Office may treat a mark as having secondary meaning after 5 years of continuous use Paul D. Supnik Beverly Hills Bar Association August 6, 2015 12
- 13. Searches Preliminary screening search Trademark Office database Google Comprehensive searches Trademark Office database State trademark registrations Specialized common law databases Domain names Business names Web common law Searches are somewhat subjective No search is perfect A matter of risk tolerance Paul D. Supnik Beverly Hills Bar Association August 6, 2015 13
- 14. Red Flag Issues How did client select mark? Is someone using a similar mark? Similar in sight, sound or meaning Is proposed mark slight variation? Why did client suddenly see you? Paul D. Supnik Beverly Hills Bar Association August 6, 2015 14
- 15. What will the Trademark Office Register? No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: …. The Trademark Office is charged with registering marks unless the proposed mark is conflicting with existing registrations (15 USC 1052(d)) or is— 15 USC 1051 et seq. (Lanham Act) Paul D. Supnik Beverly Hills Bar Association August 6, 2015 15
- 16. What is an infringing mark? Determining infringement Similar of sight, sound or meaning 8 factors in 9th Circuit AMF v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) 1. strength of the mark; 2. proximity of the goods; 3. similarity of the marks; 4. evidence of actual confusion; 5. marketing channels used; 6. type of goods and the degree of care likely to be exercised by the purchaser; 7. defendant's intent in selecting the mark; and 8. likelihood of expansion of the product lines. Network Automation v. Advanced Systems Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011) added additional analysis When there is a likelihood of confusion as to source or sponsorship. Paul D. Supnik Beverly Hills Bar Association August 6, 2015 16
- 17. One more concept -- Dilution Federal Trademark Dilution Act Requires mark to be famous Niche fame does not count Really is for “Fortune 500” marks Blocks use of marks for unrelated goods E.g. can’t use KODAK on a new brnad of bicycles Examples of marks capable of being diluted: KODAK (traditionally the example) SONY TIFFANY 15 USC 1025(c) Blurring or tarnishment Likelihood of confusion not required Paul D. Supnik Beverly Hills Bar Association August 6, 2015 17
- 18. Typical rejections Merely descriptive or deceptively misdescriptive (15 USC 1052(e)(1) Primarily geographically deceptively misdescriptive (15 USC 1052(e)(3) Is a flag or national symbol (15 USC 1052(a)) Identifies living individual without consent (15 USC 1052(c)) Even if only a nickname, e.g. OJ, THREE PETE Disparaging, scandalous (15 USC 1052(a)) E.g. REDSKINS offensive and disparaging Primarily merely a surname (15 USC 1052(e)(4)) Even if it only sounds like a surname But OK if very unusual name Functional (15 USC 1052(e)(5)) Some, but not all, can be cured with proof of secondary meaning Paul D. Supnik Beverly Hills Bar Association August 6, 2015 18
- 19. Going Abroad Paris convention File in most countries in the world within 6 months of filing in the United States and preserve the U.S. filing date for filings abroad Madrid Protocol File one application based on home U.S. application or registration Designate up to about 90 member countries File in USPTO – WIPO fans out application to designated countries Designated countries have 12 or 18 months to reject by which time you need local counsel there Some disadvantages over national filings CTM registration One registration covers all 28 EU territories Defensive registration Prevent trademark pirates from registering first Own goods manufactured in Asia may be prevented from export Treaties and national filings Common law trademark rights generally do not exist abroad – registration is the only way to acquire trademark rights Paul D. Supnik Beverly Hills Bar Association August 6, 2015 19
- 20. Using a mark properly can be at least as important as registration! Use a trademark as an adjective and Follow the mark with a noun APPLE computers CHEERIOS brand breakfast cereal Do not use mark as a verb XEROX this (NO!) Put it in distinctive typeface, italics, and/or bold and make it stand out GreenWay ™ Restaurants Use when appropriate a ™ or ® Have the client submit advertising copy and labeling to trademark counsel before it is set in stone Paul D. Supnik Beverly Hills Bar Association August 6, 2015 20
- 21. Registration Process File application Receive Office Action 4 months later Respond to Office Action within 6 months In writing Call the Examining Attorney (large percentage of Examining Attorneys now telecommute from home) Second and possibly final Office Action if not approved Approval of application for publication Published within about 3 months 30 day publication period If no opposition: Registered in about 3 months if use based application Notice of allowance within a few months if intent to use Virtually all filing of trademark applications are now accomplished online Paul D. Supnik Beverly Hills Bar Association August 6, 2015 21
- 22. Registration certificate They can be in color now Paul D. Supnik Beverly Hills Bar Association August 6, 2015 22
- 23. Oppositions Mini litigation in Trademark Office Trademark Trial and Appeal Board Evidence introduced by testimonial depositions – no live trial FRCP procedures followed Full discovery available TTAB has limited jurisdiction – can only determine whether a mark is to be registered Must be filed within 30 days of publication or within limited extensions of time thereafter (maximum of 6 months even if trademark applicant stipulates) Paul D. Supnik Beverly Hills Bar Association August 6, 2015 23
- 24. Intent to Use application 6 months to file statement of use after Notice of Allowance Up to 5 extensions of time to file statement of use, 6 months each, after Notice of Allowance Statement of use includes date of first use and first use in commerce Statement of use includes specimen showing the manner of use of the mark in trademark or serviced mark sense Procedure after Notice of Allowance Paul D. Supnik Beverly Hills Bar Association August 6, 2015 24
- 25. Dealing with rejection By the examining attorney Initially, by written opposition or telephone interview Most common rejection issues: Conflicting mark Merely descriptive Indefinite identification of goods and services Disclaimer required After final rejection, file appeal to Trademark Trial and Appeal Board 85% affirmance rate currently for descriptiveness and confusing similarity rejections Subsequent appeal to the Court of Appeals for the Federal Circuit or U.S. District Court Not necessarily so bad -- Paul D. Supnik Beverly Hills Bar Association August 6, 2015 25
- 26. Principal and Supplemental Registers For marks not sufficiently distinctive for the Principal Register, you might try the Supplemental Register Mark must be capable of acquiring distinctiveness or secondary meaning Mark must have actually been used Not available for generic marks Benefits Blocks 3rd parties from registering confusingly similar marks Permits use of registration symbol Shows up on trademark searches Principal register is for distinctive marks and provides substantive benefits. Supplemental register provides only limited benefits. Paul D. Supnik Beverly Hills Bar Association August 6, 2015 26
- 27. Cancellations Petition for cancellation is like a complaint in federal court Typical Grounds Priority and confusing similarity Abandonment Descriptive or generic mark Deadline for filing is 5 years after registration Unless mark has been abandoned or is generic Procedure similar to opposition proceedings in TTAB Paul D. Supnik Beverly Hills Bar Association August 6, 2015 27
- 28. Care and Feeding of Marks Section 8 Declaration between 5th and 6th year after registration Section 15 Declaration after 5 years of continuous use following registration Renewal every 10 years from registration date Police your marks Use it or lose it Abandonment -- presumption of abandonment after 3 years of nonuse Use it in trademark sense Maintenance Paul D. Supnik Beverly Hills Bar Association August 6, 2015 28
- 29. 5 Myths 1. Trademarks last forever Only if they are cared for, maintained, renewed, used, policed 2. Trademarks should describe the product According to some advertising people, but this will usually result in weak difficult to protect marks 3. Only registered marks can block my mark Common law rights can bump rights of registered marks 4. A quick Google search is all I that’s needed Sometimes that may be true, but that type of search is less likely to pick up variations of appearance and meaning of marks which may be found on a full search conducted by search firms. (nothing is perfect) 5. My new corporation name was approved The Secretary of State does not check conflicting trademarks which may prevent use of similar marks and even require a change in the corporate name. Paul D. Supnik Beverly Hills Bar Association August 6, 2015 29