intellectual property and trademark enforcement
TRANSCRIPT
Intellectual Property and Trademark Enforcement
Melissa H. Gray
Intellectual Property
Any word, logo, slogan, sound, color, or other identifying symbol used on goods or in connection with services to identify their source
Trademarks
Unique Marks
Trademarks
Symbols
SM – service mark TM – trademark ® – registered
trademark © – registered
copyright
Information, including a formula, pattern, compilation, program, device, method, technique, process, financial data, or list of actual or potential customers or suppliers that: (A) derives independent economic value, actual or
potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and
(B) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy
Trade Secrets
Examples
Any new, nonobvious, and useful: Process Machine Manufacture Composition of matter Asexually reproduced plant
Right to exclude others from practicing the invention Duration: 20 years (utility); 15 years* (design) *As of May 13, 2015
Patents
“I thought of this, so I own it.” ~Potential ClientPatent I can patent this idea Copyright You need to register your work before copyright applies If there’s no copyright notice, it’s not protected If I credit the owner, I don’t infringe If I found it online, copyright does not applyTrademark We registered the domain name, so we own the trademark We own a trademark so no one can use our trademark for anything—ever
Common IP Myths
Choose a Mark SEARCH! Application and Use
Enforcement
Maintenance
Trademark Process
Client’s key objective: avoid marks that describe its product or service or where they are from Example of descriptive mark: COMFORT-STRETCH™ for
active wear Descriptive marks are more difficult to register and
stop competitors from using all traders should be free to use words that describe their
products/services advertising people prefer descriptive marks because they
send a message about the product or service they advertise
Choosing The Right Mark
Invented words that say nothing about the product/service are the strongest marks example: LYCRA®, EXXON®, KODAK®, XEROX® GOOGLE®
Invented words enjoy a wider ambit of protection and are easier to protect competitors have no good reason to come close to an
invented mark But businesses are reluctant to choose an invented word
more effort is required to explain the use and benefits of the product/service
Fanciful/Arbitrary Marks
Can be "suggestive" of product/service’s qualities without being descriptive
Alternative to invented word: a dictionary word that is unrelated to your product/service e.g. JAGUAR® for cars; PENGUIN® for books
Another alternative: combine parts of two words to create a new word example: MICROSOFT®, COMPUSERVE®
Another option: your “house mark”plus another word(s) that is generic/in common use e.g.: Microsoft E-mail
Suggestive Marks
Avoid marks that are surnames or full names such marks must be used a lot before you can claim them for
yourself still, personal names are popular
e.g. DUPONT™, MCDONALDS® Avoid marks that are composed of initials
example: IBM®, BMW® these types of marks have narrow protection (competitors can
come closer to them without infringing) Avoid marks that have undesirable connotations in other
languages NOVA® (for cars) means "no go" in Spanish
Marks to Avoid
Trademark Clearance Searching
How Much is Enough?
Trademark searching Why search? Dangers of no search or insufficient search Attorney liability Practical advice
Highlights
Question for the Audience:
Do you have a duty to search prior to using or filing a trademark?
NO!BUT DO IT ANYWAY!
Seeking forgiveness vs. asking permission* No federal or PTO requirement to search
before use or attempt to register But serious consequences may arise for
client and attorney for failing to search adequately first
Relevant to the analysis of adoption in bad faith (attorneys’ fees)
No Duty
Avoid wasting time and money responding to examiner rejection or opposition
Avoid lawsuits and big $$$ damages Typically, exposure is cost of phasing out new mark + profits
earned by its use (or damages aggrieved party has suffered) + legal costs + a portion of aggrieved party’s legal costs aggrieved party can possibly get all its legal costs not unusual for aggrieved party to accept phase-out of problematic
mark (without payment of damages) but a phase-out can still be expensive
For important marks that would be expensive to phase out, search more thoroughly
Benefits of Searching
Free Searching U.S. Trademark Office offers free search system for searching
trademarks (Trademark Electronic Search System (TESS) available at http://tess2.uspto.gov/)
Preliminary/Knock Out Search Federal and relevant state registries on databases
Full Search Federal and State Registries Common Law Usage Domain Names Business Names Social Media Accounts Investigation Following Search
Search Options
Full searches and investigations cost more Time consuming Attorney’s judgment on similarity of marks
and goods International filings Ultimately a question of risk tolerance No search is full proof
Limitations
Where Can I Search For Free?
Conducting a free search and limitations: USPTO.gov*
Search “BLUE RAY” 25 records Search “BLUERAY” 7 records
Search “PILLOW PET” 32 records Search “PILLOWPET” 0 records
LIMITATIONS Doesn’t always catch phonetic, spelling, and plural
variations TIPS
Use * Always use two words instead of one
CAUTION!
GOOGLE® Corsearch® Thompson Reuters™
Other Search Options
Sands, Taylor & Wood v. Quaker Oats Co.,1990 WL 251914 (N.D. Ill. 1990) Quaker Oats didn’t search before use Trial court said it had duty to do so After numerous appeals $26.5 million in damages, affirmed
attorney’s fees award
International Star Class Yacht Racing Ass’n v. Tommy Hilfiger U.S.A., Inc., 80 F.3d 749 (2nd Cir. 1996) Suggested that full searches were necessary Not limited to national sales campaigns Defendant ignored attorney’s advice to search
Dangers of Failure to Search
No federal or PTO requirement for attorney to search before filing application to register
But duty to represent client competently 37 CFR 10.76 TDRPC 1.01
Malpractice Typically in state court
Ethics and Liability
Best practice Conduct full comprehensive search and investigation Render opinion to client in writing
Issue of negative search results Explain limitations of search in writing Especially important for national ad campaigns and large companies
If client does not want to spend money on comprehensive search Conduct search of federal and state registries Render opinion to client in writing Explain limitations of search Better for one time ad runs, weak marks, small local businesses
If client does not want any search Explain risks to client, in writing, and have client sign waiver
So how do you protect clients and avoid malpractice?
Filing Trademark Applications
Trademark Registration
Process takes anywhere from 12-18 months in most cases Expediting available in limited instances
Petition to Make Special Use this form to petition to expedite initial examination
of an application. A petition fee ($100) is required. Petitions to make special are granted when there is the existence of actual or threatened infringement, pending litigation, or the need for a registration as a basis for securing a foreign registration. See TMEP §1710 et seq.
The Application Process
Office Actions- 6 months to respond Most responses to Office actions (official letters) must be received
within 6 months from the mailing date on the Office action. In certain circumstances, the Office action will specify a different response period. There are no extensions to the deadline specified in the letter. Examining attorneys have no discretion to extend the time period for filing a response. If applicants do not submit a timely response to an Office action, their applications will be declared abandoned.
2(d)-likelihood of confusion G&S Amendments Disclaimers Principal vs. Supplemental Register
Office Actions
The registrant may use the registration symbol ®; The registration is protected against registration of a
confusingly similar mark under Trademark Act Section 2(d); The registrant may bring suit for infringement in federal court;
and The registration may serve as the basis for a filing in a foreign
country under the Paris Convention and other international agreements
After the mark has been in use for over 5 years, an applicant may reapply for registration on the Principal Register
No statutory damages
Supplemental Register
Use it, or Lose it. Excusable Non-Use—must be temporary, and
the owner must clearly demonstrate how the circumstances prevent use of the mark in commerce and what efforts are being made to resume use. Please note that nonuse due to the decreased demand for a product does not by itself constitute "excusable nonuse.”
See TMEP §1604.11
Maintenance
Section 8 You must file a Section 8 declaration, specimen,
and fee on a date that falls on or between the fifth (5th) and sixth (6th) anniversaries of the registration (or, for an extra fee of $100.00 per class, you may file within the six-month grace period following the sixth (6th) anniversary date).
FAILURE TO FILE A SECTION 8 DECLARATION WILL RESULT IN CANCELLATION OF THE REGISTRATION.
Declaration of Use and/or Excusable Nonuse of a Mark
Section 15 To claim that a mark registered on the Principal Register is now
incontestable, you must file a Section 15 declaration once the mark has been in continuous use in commerce for a period of five (5) years after the date of registration, or date of publication under § 12(c), and the mark is still in use in commerce.
Section 15 does NOT apply to marks on the Supplemental Register.
You may file this declaration within one (1) year after the expiration of either any five-year period of continuous use following registration, or any five-year period of continuous use after publication under § 12(c).
Declaration of Incontestability
Sections 8 & 15 May be filed as a Combined Declaration of Use &
Incontestability under Sections 8 & 15 only if you have continuously used a mark registered on the Principal (not Supplemental) Register in commerce for five (5) consecutive years after the date of registration
Filing falls on or between the fifth (5th) and sixth (6th) anniversaries of the registration (or, for an extra fee of $100.00 per class, you may file within the six-month grace period following the sixth anniversary date)
Renewals
Section 9 The owner must file a Declaration of Use (or
Excusable Nonuse) and an Application for Renewal between the 9th and 10th years after the registration date, and between every 9th and 10th year after the registration date thereafter. See 15 U.S.C. § 1059.
Combined Sections 8 & 9 (Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal)
Renewals Cont.
Common Law Rights
Enforcement
Do a complete investigation of the problematic use and strength of claims
Notify the wrongdoer of the problem in an appropriate manner
Follow up until a resolution is reached by the parties
Client finds a problem, what next?
We determine likelihood of confusion by focusing on the question whether the purchasing public would mistakenly assume that the applicant's goods originate from the same source as, or are associated with, the goods in the cited registrations. [citation]. We make that determination on a case-by-case basis, [citation], aided by the application of the factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Those factors are: 1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and
commercial impression. 2. The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in
connection with which a prior mark is in use. 3. The similarity or dissimilarity of established, likely-to-continue trade channels. 4. The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated
purchasing. 5. The fame of the prior mark. 6. The number and nature of similar marks in use on similar goods. 7. The nature and extent of any actual confusion. 8. The length of time during and the conditions under which there has been concurrent use without evidence
of actual confusion. 9. The variety of goods on which a mark is or is not used. 10. The market interface between the applicant and the owner of a prior mark. 11. The extent to which applicant has a right to exclude others from use of its mark on its goods. 12. The extent of potential confusion. 13. Any other established fact probative of the effect of use.Id. at 1361, 177 USPQ at 567
DuPont Factors
Not all of the DuPont factors may be relevant or of equal weight in a given case, and "any one of the factors may control a particular case," In re Dixie Rests., Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
What Do You Think?
Adidas Payless
What Do You Think?
Converse Chuck Taylor All Star Ralph Lauren “Ranell”
What Do You Think?
Deadmau5 vs. Mickey Mouse Colgate v. Aquafresh
What Do You Think?
Marijuana Candy vs. Regular Candy Costco v. Tiffany
If businesses use marks/names similar or identical to a client’s, over time the mark/name is at risk of: being significantly limited in its scope of protection being declared invalid for non-distinctiveness
To avoid this, seek out users of, and applicants for marks/names that are confusingly similar stop use of similar mark/name or grant user a license oppose applications for similar marks
Stopping Infringers
Purposes of Cease and Desist Letters Tell alleged infringer to cease causing harm Strike fear in recipient so they will stop Start the clock on “willful” infringement Possibly increase potential damages
Cease and Desist Letters
A cease and desist is not legally binding It is simply an attorney’s (often very onside)
opinion of the lawA cease and desist is not a lawsuit It should still be taken seriously, but more
often than not, a cease and desist letter does not result in litigation
It’s Just a Letter
1. Research the individual or company to whom you plan to send a cease and desist notice. Are you dealing with a fan? Well-meaning student? Satirist? A competitor or counterfeiter with bad intentions? Think about how your proposed notice will be received, and how it would play out in the press or before a judge. The additional time researching and writing an appropriate letter is always well spent. It can help to avoid a PR fiasco, and in some cases lower the risk that the recipient will file a preemptive lawsuit.
Best Practices
2. Avoid using form letters or emails for distributing cease and desist notices. Personalize the letters to fit the situation and remember your company and customer’s voice. Use corporate messaging and avoid coming across as a bully.
Best Practices
3. Use a tone in the notice that is appropriate to the situation. It should parallel the company’s level of concern, speak appropriately to the person who will receive the notice, and accurately reflect the company’s own public image and values.
Best Practices
4. Polite requests often are more effective than aggressive cease-and-desist notices. If the situation involves truly abhorrent behavior by an infringer, however, then strongly consider having a letter sent by the company’s outside counsel. Among other advantages to doing so, this allows the company to distance itself somewhat from any harsh tone necessarily included in the cease and desist notice.
Best Practices
5. Keep in mind that a cease-and-desist notice is almost never confidential or privileged. Even if you label the notice “confidential,” in the freewheeling world of social media it is likely to end up on the recipient’s blog or Web site, or in the news.
Best Practices
Softball vs. Hardball
“JDPI is the owner of the JACK DANIEL’S trademarks (the “Marks”) . . . .”
“It has recently come to our attention that the cover of your book Broken Piano for President, bears a design that closely mimics the style and distinctive elements of the JACK DANIEL’S trademarks.”
“In order to resolve this matter, because you are both a Louisville ‘neighbor’ and a fan of the brand, we simply request that you change the cover design when the book is re-printed.”
Funny Responses
“Thanks for your letter! I love hearing from and meeting people from all around the country. . . . under normal circumstances I would assume you have a beard . . . I do too! But, since you are a lawyer, you probably just have some expensive suits instead.”
“HOPASAURUS REX is a name we give to a process upon which we apply to a beer and not the beer itself. Normally I would tell you what this process is, but I really don’t feel like it anymore since your first introduction to me wasn’t very nice. Furthermore, I don’t want you to try to trademark it and sue me later.”
“In any event, we don’t use HOPASAURUS REX enough to care about what we call it, so you may consider this letter to be our complete and total acquiescence to your demand that we cease and desist the use of the mark immediately.
Cont.
“Please tell [your client] they could have just asked us nicely and saved the legal fee. I also request (but not demand) you please tell them that I will not be giving them a hug if I ever meet them.”
“PS: Please enjoy this drawing of a T-Rex waiving white flags, which was suggested for inclusion by my attorney. Actually, he’s just my friend, I can’t afford his legal fees.”
License TTAB Proceedings Federal or State Lawsuit License
Other Methods of Enforcement
Domain Name Issues
The typical scenarios which trigger the desire to obtain a domain from 3rd party
Prosecute, Monitor or Recover? Legal considerations/methods of recovery Acquisition options/methods of recovery Determining your “Recovery Strategy”-
Business vs. Legal Decisions
Overview
Company Name Change New Product Release Merger or Acquisition Domain Expired and Third Party Acquired Unauthorized Transfer Occurred Review/Audit of Portfolio
Typical Scenarios
Cease and desist letter UDRP or other administrative proceeding Court remedies – ACPA Domain Acquisition
Tools for Domain Recovery
UDRP = Uniform Dispute Resolution Policy Arbitration proceeding by accredited providers
E.g. WIPO, NAF, CPR Institute NEW - Czech Arbitration Court
Applies to all gTLDs domains Some ccTLDs have adopted the UDRP
E.g. .ac, .ag, .bs, .cy, .gt, .na, .nu, .tt, .tv, .ws Other ccTLDs have implemented their own policies:
CanadianInternetRegistrationAuthority(CIRA)(.ca);. .eu Alternative Dispute Resolution Rules; Nominet Dispute Resolution Service (.uk) Note: see http://www.wipo.int for a listing of dispute resolution policies
by ccTLD
UDRP Basics
Pros No discovery, no personal appearances, no
trial – Fees more predictable than litigation Don’t need personal jurisdiction over registrant
Cons No damages available Minimum 60 days to decision, sometimes
longer
UDRP Pros and Cons
Identical or confusingly similar to mark in which complainant has rights;
Registrant has no rights or legitimate interests in the domain name; and
Domain name was registered and is being used in “bad faith”
Elements of a UDRP Claim
Before notice, use in connection with a bona fide offering of goods or services;
Commonly known by the domain name; or Legitimate non-commercial or fair use,
without intent for commercial gain or to misleadingly divert consumers or tarnish the mark at issue
Defenses to UDRP Claim
ACPA = Anti-cybersquatting Consumer Protection Act
Section 43(d) of Lanham Act (15 U.S.C.) Statutory damages available $1,000 to
$100,000 per domain name
ACPA
Pros Can recover damages Statutory damages available $1,000 to $100,000 per
domain name Can seek TRO or preliminary injunction Includes dilution In rem jurisdiction
ConsUnpredictable feesGenerally need personal jurisdiction
ACPA Pros and Cons
Bad faith intent to profit, and Register, traffic in or use a domain name
that: is identical or confusingly similar to a
distinctive mark; or is identical, confusingly similar or dilutive of a
famous mark
ACPA Elements
Court may consider 9 factors: 1) Plaintiff’s trademark rights 2) Defendant’s name or nickname? 3) Defendant’s prior use for bona fide offering of goods or services 4) Defendant’s bona fide noncommercial use on a website 5) Defendant’s intent to divert consumers either for commercial gain or with intent to tarnish or disparage the mark or by creating confusion 6) Defendant’s offer to sell it w/o use or prior conduct indicating a pattern 7) Provision of false or misleading contact information8) Registration or acquisition of multiple infringing domain names 9) Extent that the mark is not distinctive and famous
Bad Faith Under ACPA
Auction Drop Club/SnapNames Direct Purchase from Current Owner Indirect Purchase from Current Owner
through 3rd Party NEED FOR SPEED!
Acquisition Options
LegalRisk Analysis – What harm/exposure does not getting this domain cause? Rights Review – what “rights” to the name do you
have and do you meet the requirements for a cause of action under administrative rules/statute?
Business Businesspurposeofdomain&urgencyofgettingit –
Whatisthebudgettogetthename?
Recovery Strategies
Consequences of Failure to Properly Use or Enforce Marks
A • AdjectiveC • ConsistentI • Identification or StatusD • Distinctive
Proper Use of Marks
AdjectiveWhich Column Shows Proper Usage?
Column A XEROX these copies a five-KLEENEX movie Send the FEDEXs Send it EXPRESS MAIL I drank four STARBUCKS Put on your RAY-BANS
Column B Use a XEROX brand copier Please hand me a KLEENEX
tissue Send the packages via FEDEX
courier Send the packages via EXPRESS
MAIL service I had four STARBUCKS lattes
Put on your RAY-BAN sunglasses
The mark should be represented the same way each time.
For example, if a mark is represented in all capital letters, you should consistently use all capital letters when referencing that mark. This has the desired effect of emphasizing that the term is indeed a trademark or service mark, not merely another word in the text.
Consistent
What can be protected? Any work of authorship fixed in a tangible medium Examples: works of art, books, computer programs,
manuals, audio-visual works, jewelry, fabric designs, architectural works
Copyrights
Derivative Works A work based upon one or more preexisting
works
Copyrights
Copyrights
Work made for hire A work prepared by an
employee within the scope of his or her employment; or
A work specially ordered or commissioned by express agreement of the parties
Thank you!Melissa H. GrayKlemchuk LLP
8150 N. Central Expressway, 10th FloorDallas, TX 75038