Ten things you need to know to protect your company and brand names

Ten Things You Need to Know to Protect
Your Company and Brand Names
Wendy K. Peterson (BBA ’82)
& Jeff Van Hoosear
University of Hawaii / PACE
January 23, 2020

© 2020 Knobbe Martens
Introduction
2
• Whether you work for a company, have your own business, or plan to start a new
business — protecting your company and brand names are critical
• This presentation will cover ten things you need to know about protecting your
company and brand names

Ten Things You Need to Know
• How do I:
• 1. Choose a trademark?
• 2. Make sure I can use the trademark I choose?
• 3. Register my trademark?
• 4. Keep my trademark in force?
• 5. Protect my trademark from unauthorized use?
• 6. Stop someone from using my trademark?
3

Ten Things You Need to Know
• 7.What are copyright rights?
• 8.What are domain name rights?
• 9.What are Rights of Publicity?
• 10.What are Privacy Rights?
4

Types of Intellectual Property
5
• Trademarks
--Identify the maker of goods and goodwill (recognized by consumers)
• Copyrights
--Reflect artistic expression/creativity
• Trade Secrets
--Proprietary data that has commercial value
• Patents
--New Inventions/Ideas/Designs
• Rights of Publicity and Privacy
-- Right to control commercial use of name, image (photos), likeness

Trademark vs. Brand?
• Your “brand” is your image and reputation – what the public sees and thinks
• Your trademarks are the aspects of your brand that are unique and specific –
what can be protected
6

Trademarks – Source Identification and Goodwill
7

Words or Letters
8

Designs or Logos
9

Non-Traditional Trademarks
10
• Sound
• Slogan
“Don't Leave Home
Without It”
“Just Do It”
• Color
• Configuration

1. How do I choose a trademark?
11

2. How do I make sure I can use a mark?
• Search U.S. Trademark Office www.uspto.gov
• Search Internet (common law use and domain names)
• Hire someone to do a search
⎼ In–house screening search
⎼ Full search
⎼ International searches
12

3. How do I register a mark?
FEDERAL REGISTRATION
• Prima facie evidence of ownership and validity
• Incontestable status after five years
• Right to record the registration with the U.S. Customs Service to prevent
infringing goods from being imported into the U.S.
• Can file application based on “intent to use” but must commercially use mark
in order to obtain registration
13

3. How do I register a mark?
STATE REGISTRATION
• Must be based on actual use
• Inexpensive
• Quick
• Geographically limited
• In Hawaii, register with Dept. Commerce & Consumer Affairs - $25 plus $20
for expedited review
⎼ https://cca.hawaii.gov/breg/registration/trade/
14

4. How do I keep my trademark in force?
Unlimited term as long
as mark is continuously
used and does not become
a generic term
15

5. How do I protect my trademark from unauthorized use?
• Use the Internet!
⎼ Use search engines or Google Alert
⎼ Use eBay’s VeRo program
⎼ Use Amazon’s Brand Registry
• Use US and foreign watching services
⎼ Application Watch Services - alerted when a new application is filed
⎼ Publication Watch Services - alerted when an application is published for
opposition
• Monitor domestic and foreign markets
16

6. How do I stop someone from using my trademark?
• Duty to police against unauthorized use
• Cease and desist letters
• Trademark Trial and Appeal Board (TTAB)
⎼ Opposition and cancellation proceedings
• Civil court actions
⎼ Equitable relief
⎼ Monetary damages
⎼ Attorneys’ fees
17

7. What are copyright rights?
• Protects original artistic expression
18

Copyrights
• Advertisements
• Videos
• Photos
• Website
• Manuals
• Catalogs
• User generated content
19

Works Created By Others
Employees vs. Independent Contractors
⎼ Big difference - state law governs based on control over work, how paid,
tools/supplies, etc.
⎼ Employers own copyrights in works created by employees
• "Works Made for Hire"
§ Within scope of employment
§ By contract (categories of works)
⎼ Independent Contractors own copyrights in works they create
⎼ Written agreement may allocate ownership differently
⎼ TIP: Make sure you use work for hire agreement for:
o Company photos/video shot by outside photographer
o Company logo designed by outside graphic artist
o Website content created by outside agency
20

Register With U.S. Copyright Office
• Registration IS NOT required to create copyright rights, but IS required to enforce
your rights against others
21
• Registration gives presumption that copyright is valid
• Registration is a pre-requisite to enforcing copyright via infringement lawsuit
• Registering copyright PRIOR TO infringement lawsuit provides opportunity to
recover statutory damages and attorneys’ fees
• On-line registration – e-CO

8. What are domain name rights?
• Select, search, and register domain names at the same time (or before!) as
your trademark
• Review .com, .org, and .net
• If you will sell products in foreign countries, consider impact of country code
domain names (.co.uk and.cn)
• Review common misspellings of your company name or marks and
“negatives”
• Maintain accurate domain name registration records
• Calendar renewal dates for domain names
22

9. What are Rights of Publicity
• Statutory (state) and/or common law
• Protects the commercial value in an individual’s identity and reputation
• Derives from right of privacy but generally considered a property right
• Claims often combined with trademark or copyright rights
• Defenses include First Amendment and Fair Use
⎼ Transformative defense
⎼ Rogers test
⎼ Public Interest/Public Affairs
23

STATE PUBLICITY RIGHTS
• State granted rights
⎼ California (life plus 70 years)
⎼ Hawaii (life plus 70 years)
⎼ Nevada (life plus 50 years)
⎼ Tennessee (life plus 10 years
and commercial exploitation)
⎼ Indiana (life plus 100 years)
⎼ New York (no post-mortem)
24

Katherine Heigl
• Duane Reade tweeted photo of
Katherine Heigl after shopping at
the store
• Heigl sued for $6 million for
violation of her rights of publicity
after refusal to remove
• Parties settled with a donation to a
charity designated by Heigl
25

Here’s Looking At You
• Burberry does a timeline on
Facebook
• Burberry uses photo from
final scene of Casablanca
• Had permission from
copyright owner of photo
• Bogart is wearing a Burberry
trench coat
26

10. What are Privacy Rights?
• Louis Brandeis: “the right to be left alone”
⎼ Harvard Law Review 1980
• GDPR - General Data Protection Regulation
⎼ May 25, 2018
• CCPA – California Consumer Privacy Act
⎼ January 1, 2020
27

Thank You!
Wendy.Peterson@Knobbe.com
Jeff.VanHoosear@Knobbe.com

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