trademark nuts and bolts by william r. samuels, esq. w.r
TRANSCRIPT
TRADEMARK NUTS AND BOLTS
by
William R. Samuels, Esq. W.R. Samuels Law PLLC
New York, New York
11/3/2014
1
Trademark Nuts & Bolts
Bill Samuels W.R. Samuels Law PLLC
IP Protections
Patents
Trademarks
Trade
Secrets
Copyrights
• Creative expression
• Author’s life
+ 70 years
• Signs/symbols/
source indicator for
goods & services
• Perpetual
• New “ideas”
• 20 years
• Idea that’s
kept secret
• Perpetual
11/3/2014
2
Sounds
What Is a Trademark?
• Anything that indicates the origin/source of
a product or service
• Identify & distinguish goods or services
Colors
Shapes
Slogans
Logos/Designs
Trade Dress
Trademark v. Trade Name
• Trademark =
Adjective
• Trade Name = Noun
Trademark Trade Name
Nike Shox Nike, Inc.
Ford Focus Ford Motor Company
Trader Joe’s (market) Trader Joe's Company
Google (search engine) Google, Inc.
Magellan GPS Magellan Navigation, Inc.
11/3/2014
3
• Consumer Protection – avoid consumer
confusion and assure consumers get what
they expect in the marketplace
Property Interest –protect good will, reputation, and other traits of a brand
that affect consumers’ willingness to repeatedly buy/use a product
Russia
вот что я люблю
China
我就喜欢
UAE
اكيد بحبه
Why Have Trademarks?
Choosing a Trademark
• Trademarks must be distinctive— they must indicate a single source for a given product
• Trademarks can be: 1. Inherently distinctive or they can 2. Acquire distinctiveness
but they 3. Cannot be generic
11/3/2014
4
Knowing What You Have: Measuring Distinctiveness
Scale of Distinctiveness
Distinctiveness Depends on Context…
APPLE for computers—
Arbitrary and inherently distinctive
APPLE for piece of fruit—
Generic and cannot become distinctive
How Do You Know?
Context and Trademark Strength
11/3/2014
5
FIVE MINUTE EPOXY
The Lightning Brand
Descriptiveness Problem
What if the chosen device is descriptive?
• Descriptive = merely indicates
WHAT the product is
• Over time a descriptive mark may
be able to identify the source for a product…
• Secondary meaning/acquired
distinctiveness developed
over time
• A term can come to identify
goods, but there is no
guarantee
HONEY BAKED HAM®
—Descriptive for honey-glazed baked ham…
Not registrable without secondary meaning:
Surnames
Geographic
Designations
Functionality • e.g, trade dress
vs.
Pitfalls and Traps
vs.
vs.
11/3/2014
6
1. Hints about the product—only provides clues
2. Requires imagination to connect the mark with the
product
You think a mark is suggestive, but that does not mean the
USPTO will—right away, or ever…
Trademark Suggestive of…???
Coppertone Sun tanning products
Microsoft Software for microcomputers
Netscape Travelling the Internet Webscape
The Money Store Lending services
Do you agree with these?
Suggestive Marks
Trademark Searching
• Search should be broad to determine availability—include federal registrations, state registrations, and common law trademark rights
• Don’t forget to search international filings
• No search is perfect—professional searches are more complete than what you can do yourself
• Trademark attorneys are experts in determining whether particular marks are viable and likely to be registered
• Examine whether marks revealed in the search are likely to cause confusion with the proposed mark—that’s a bar to registration
11/3/2014
7
Federal Registration
Common Law
• Arise from actual use of the mark
• ONLY extend to the area in which the
mark is used
User 1
User 4
User 3 User 2
• Application files with US Patent and Trademark
Office
• Presumption of exclusive rights to the mark
nationwide
• National in scope, regardless of the actual
geographic use made
• Registration serves as automatic
evidence of validity One User
No Rights
Common Law vs.
Registration
Use-based application:
• Filed if applicant is using the mark in commerce
Intent-to-use application (since 1989):
• Filed if applicant intends to use the mark in the US in the future—will not be registered until the applicant proves use
Registering Your Mark: US
Application Types
11/3/2014
8
• A filing fee for each class
of goods and/or services covered
by the application
• Use-based: need specimen * You otherwise need one later
• A clear drawing of the mark
• List of the goods or services
• Other boring things lawyers love to obsess about… • Company name, description of the mark, sufficient drawing
Registering Your Mark: What You
Need
1. Nationwide protection from the date of the application
a. Priority against anyone adopting the same or similar mark after
the date of the registrant’s application
2. Incontestability
a. If used continuously for 5 years, it may become incontestable
3. Warning to Others
a. Mark will be found in trademark searches
b. Constructive use date can be the difference to determine priority
4. Barring Imports
a. Goods produced abroad bearing infringing marks can be blocked
at Customs
5. Protection against Counterfeiting
6. Evidentiary Advantages
a. Registered mark is prima facie valid in court
7. Can use ® and affix to goods, confirming ownership and validity
Registration Advantages
11/3/2014
9
1. Likelihood of Confusion—consumers mistaken regarding the source of
a product/service
2. Dilution— hurt, decrease in value
a. Tarnishment—infringement results in diminution of the
mark/brand; consumers may come to associate unfavorable
characteristics with the mark
b. Blurring—whittling away of the distinctiveness of the mark;
concern that over time, mark will lose its uniqueness
Famous marks
BAD OVERSIGHTS
Don’t Use the Mark Avoid abandoning your rights!
Don’t Police the Mark
Avoid confusion and genericism
You Must Police Your Mark to Avoid and Combat:
How to Lose Your Mark
DuPont Factors 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.
In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
11/3/2014
10
Fair Use –
•Words may be used in their regular meaning
•This applies ONLY to descriptive 2ndary meaning marks
•Court looks to see if someone is trying to cash in
Nominative Fair Use:
•Can refer to brand name in order to describe or refer to a product, as long
as the use does not attempt to capitalize on consumer confusion
Parody:
•Editorial/parodic use is highly protected by 1st Amendment
Abandonment of Mark:
•Mark can be abandoned through non-use—three-years of non-use is
presumptive evidence of abandonment
Defenses to Infringement
An applicant can use its first filing date as the effective filing
date in another contracting State, provided that he/she files
another application within 6 months from the first filing.
System for filing trademarks in separate countries based on a single basic
application or registration
• BUT anything bad that happens to the basic application or basic
registration within 5 years of the registration date of the international
registration will also have the same effect on all related applications
Paris Convention (1883)
Madrid Agreement (1891)/Protocol (1989)
Nice Agreement—(1957)
Established a classification of goods and services for the purposes
of registering trademarks and service marks
Trademark Treaties
11/3/2014
11
• The USPTO may issue an Office Action:
• Clarify information as requested
• Argue legal issues raised
• Must respond within 6 months or the
application will be abandoned
• If the application is accepted, the USPTO will issue:
• A Certificate of Registration for a use-based application
• A Notice of Allowance for an intent-to-use application
• 6 months from Notice of Allowance to file a Statement of Use
or a request an extension—a maximum of 5 allowed
• If no issues arise, it generally takes 12-18 months for registration
to issue
Prosecution
• Most of the world does not have common law
• That means most
countries base priority
on first-to-file basis
• Foreign trademark owners
have 6 months to file an
application in the US after
filing in their respective
country to still get priority date
• Trademark classes are the same as in the US, except
in certain cases (i.e., Canada does not use class
system)
Foreign Trademarks
