what every dietary supplement business should know about protecting brands and managing trademark...
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Presentation to dietary supplement industry on practical aspects of trademark law including the methodologies for effectively developing and protecting brands in today\'s marketplace.TRANSCRIPT
What Every Dietary Supplement Business Should KnowCapture Your IP: Developing and Perfecting Your Invention Disclosure Program
What Every Dietary SupplementBusiness Should Know AboutProtecting Brands and ManagingTrademark Concerns
Series 3 • Seminar 4 Tuesday, July 21, 2009Series 3 • Seminar 3 Thursday, May 28, 2009
P R E S E N T E D B Y :
Michael E. MangelsonCatherine P. LakeJoshua G. Gigger
Seminar 4 • Tuesday, July 21, 2009
What Every Dietary Supplement Business Should Know
Overview
• What is a trademark?
• Selecting and clearing trademarks.
• Protecting trademarks through registration.
Series 3 • Seminar 4 Tuesday, July 21, 2009
• Protecting trademarks through registration.
• Protecting trademarks through proper use.
• Protecting trademarks through enforcement.
What Every Dietary Supplement Business Should Know
BrandingBranding--Why Trademarks MatterWhy Trademarks Matter
Series 3 • Seminar 4 Tuesday, July 21, 2009
What Every Dietary Supplement Business Should Know
What is a Trademark?
• Any word, name, symbol, or device, or anycombination thereof, used to distinguish goodsand identify the source of goods.
Series 3 • Seminar 4 Tuesday, July 21, 2009
What Every Dietary Supplement Business Should Know
Trademark–Examples
• Words: USANA XANGO SCHIFF
• Designs:
Series 3 • Seminar 4 Tuesday, July 21, 2009
• Designs:
• Word/DesignCombinations:
What Every Dietary Supplement Business Should Know
Trademark–Examples
Packaging:
Series 3 • Seminar 4 Tuesday, July 21, 2009
Color, Sound, Fragrance:
What Every Dietary Supplement Business Should Know
Building Strong Trademarks Involves Three Steps:
1. Select an appropriate mark.
2. Register the mark.
3. Protect the mark through proper use and
Series 3 • Seminar 4 Tuesday, July 21, 2009
3. Protect the mark through proper use andenforcement.
What Every Dietary Supplement Business Should Know
1. Identify a distinctive mark.
2. Clear marks through trademark searches.
3. Do not use marks that are not truthful, that are
SelectingSelecting TrademarksTrademarks
Series 3 • Seminar 4 Tuesday, July 21, 2009
misleading, or that have unsubstantiated productclaims.
What Every Dietary Supplement Business Should Know
A mark must be distinctive (inherently or acquired through use) to be protectable. For thestrongest legal protection, select distinctive marks without descriptive, surname orgeographic connotations.
SelectingSelecting TrademarksTrademarks––Distinctive MarksDistinctive Marks
Series 3 • Seminar 4 Tuesday, July 21, 2009
Leastdistinctive
Mostdistinctive
What Every Dietary Supplement Business Should Know
Selecting TrademarksSelecting Trademarks––Searching and ClearingSearching and ClearingTrademarksTrademarks
Series 3 • Seminar 4 Tuesday, July 21, 2009
What Every Dietary Supplement Business Should Know
• Goal: eliminate marks that areconfusingly similar to or thatdilute third-party marks.
Selecting TrademarksSelecting Trademarks––Searching and Clearing TrademarksSearching and Clearing Trademarks
• Factors to analyze:
Series 3 • Seminar 4 Tuesday, July 21, 2009
• Factors to analyze:
- similarities of sound,appearance, and meaning.
- relationship between the marks’products or services andchannels of trade.
- sophistication of customers.
- strength and fame of marks.
What Every Dietary Supplement Business Should Know
Selecting TrademarksSelecting Trademarks––Searching and Clearing TrademarksSearching and Clearing Trademarks
1. Conduct preliminary “knock-out” screening.
– USPTO database at http://www.uspto.gov (no state,common law, or foreign records).
– Third-party databases such as SAEGIS and Dialog(includes federal, state, and some foreign
Series 3 • Seminar 4 Tuesday, July 21, 2009
(includes federal, state, and some foreignsearching).
– Internet search engines, yellow pages, WHOISregistries, and state databases.
– Trade/industry directories and telephone books.2. Engage counsel to search federal and state records,
including registrations, pending and abandonedapplications, and expired and canceled registrations.
What Every Dietary Supplement Business Should Know
3. Order full “common law” search by commercial searchfirm (e.g., Thomson CompuMark).
4. Order international search (if foreign use is anticipated).5. Obtain counsel to evaluate search reports and provide
Selecting TrademarksSelecting Trademarks––Searching and Clearing TrademarksSearching and Clearing Trademarks
Series 3 • Seminar 4 Tuesday, July 21, 2009
5. Obtain counsel to evaluate search reports and provideopinion regarding risks.
6. Investigate abandoned applications, canceled orexpired registrations, owner of potentially conflictingmark, and USPTO status information and prosecutionhistory for applications and registrations to determineavailability of mark in the marketplace.
What Every Dietary Supplement Business Should Know
Selecting TrademarksSelecting Trademarks––Searching and Clearing TrademarksSearching and Clearing Trademarks
7. Avoid unacceptable risks by
– Abandoning mark.
– Purchasing conflicting mark.
– Obtaining consent or license to use conflicting
Series 3 • Seminar 4 Tuesday, July 21, 2009
– Obtaining consent or license to use conflicting
mark.
– Filing petition to cancel conflicting mark (e.g., if markis abandoned).
– Filing federal intent-to-use trademark application.
in advance of use to determine registerability and
possible opposition by a third party.
Salt Lake-308824
What Every Dietary Supplement Business Should Know
• FDA has primary responsibility for claims ondietary supplement product labeling, includingpackaging, inserts, and other promotionalmaterials distributed at the point of sale.
SelectingSelecting TrademarksTrademarks––Deceptive ClaimsDeceptive Claims
Series 3 • Seminar 4 Tuesday, July 21, 2009
materials distributed at the point of sale.
• FTC has primary responsibility for claims inadvertising, including print and broadcast ads,infomercials, catalogs, and similar directmarketing materials.
What Every Dietary Supplement Business Should Know
FTC’s Truth-In-Advertising law requires:
1. Truthful and not misleading advertising.
SelectingSelecting TrademarksTrademarks––Deceptive ClaimsDeceptive Claims
Series 3 • Seminar 4 Tuesday, July 21, 2009
2. Adequate substantiation for all objective productclaims.
What Every Dietary Supplement Business Should Know
• Ad for a product called “Cold Away”
- Carefully evaluate whether mark expressly orimpliedly makes a health claim.
- Must substantiate that the product helps
SelectingSelecting TrademarksTrademarks––Deceptive ClaimsDeceptive Claims
Series 3 • Seminar 4 Tuesday, July 21, 2009
- Must substantiate that the product helpsprevent colds
COLD
AWAY
What Every Dietary Supplement Business Should Know
Protecting Trademarks Through Registration
Series 3 • Seminar 4 Tuesday, July 21, 2009
What Every Dietary Supplement Business Should Know
What Are the Benefits of Federal Trademark
Registration?
Series 3 • Seminar 4 Tuesday, July 21, 2009
What Every Dietary Supplement Business Should Know
Benefits of FederalTrademark Registration
• Legal presumption of the registrant’s ownership of themark, and the registrant’s exclusive right to use themark nationwide.
• Constructive notice to the public of the registrant’sclaim of ownership of the mark.
Series 3 • Seminar 4 Tuesday, July 21, 2009
claim of ownership of the mark.
• Ability to bring an action concerning the mark in federalcourt.
• U.S. registration can be used as a basis to obtainregistration in foreign countries.
• Ability to file the U.S. registration with the U.S.Customs Service to prevent importation of infringingforeign goods.
What Every Dietary Supplement Business Should Know
Benefits of Federal Trademark Registration–Help from U.S. Customs
• Register trademarked goods withU.S. Customs.– U.S. Customs will monitor ports and seize
counterfeits.
Series 3 • Seminar 4 Tuesday, July 21, 2009
counterfeits.– Provides enhanced penalties: fines and jail
time.– 2005: $93M in counterfeit goods seized.– 2006: $155M in counterfeit goods seized.– 2007: $200M in counterfeit goods seized.– 2008: $272.7M in counterfeit goods seized.– Online form and $190 filing fee.
What Every Dietary Supplement Business Should Know
The Federal Registration Process
• File an application based on actual or intended use.
• Application must include description of goods.
• Applicant must pay filing fee.
Series 3 • Seminar 4 Tuesday, July 21, 2009
• Application is examined by USPTO.
• Application is published for opposition in theOfficial Gazette.
• Registration is valid for 10 years.
What Every Dietary Supplement Business Should Know
Does a Trademark Need to BeRegistered Before It Can Be Protected?
Series 3 • Seminar 4 Tuesday, July 21, 2009
What Every Dietary Supplement Business Should Know
• Federal registration is not necessary to establishrights in a trademark.
• “Common law” rights arise from use of a mark.
• Generally, the first to either use a mark in
Does a Trademark Need to Be RegisteredBefore It Can Be Protected?
Series 3 • Seminar 4 Tuesday, July 21, 2009
• Generally, the first to either use a mark incommerce or file an intent-to-use application withthe USPTO has the ultimate right to use andregistration.
• However, there are many benefits of federaltrademark registration.
What Every Dietary Supplement Business Should Know
Senioruser
Dangers of Failing to Register
Series 3 • Seminar 4 Tuesday, July 21, 2009
What Every Dietary Supplement Business Should Know
Senioruser
Dangers of Failing to Register
Series 3 • Seminar 4 Tuesday, July 21, 2009
Innocent junioruser registers
What Every Dietary Supplement Business Should Know
Dangers of Failing to Register
Series 3 • Seminar 4 Tuesday, July 21, 2009
Senior user’s territory frozenfrom time
junior user registered
What Every Dietary Supplement Business Should Know
Marks Not Allowed Registration
• Immoral, scandalous, or deceptive marks.
• U.S., state, or foreign flag.
• Names of living individuals (withoutpermission).
Series 3 • Seminar 4 Tuesday, July 21, 2009
permission).
• Olympic designations.
• Descriptive or misdescriptive marks.
• Marks similar to marks already registered.
What Every Dietary Supplement Business Should Know
Is a Federal Trademark Registration Valid Outsidethe United States?
Series 3 • Seminar 4 Tuesday, July 21, 2009
What Every Dietary Supplement Business Should Know
Is a Federal Trademark Registration Valid Outsidethe United States?
• No. Certain countries, however, dorecognize a U.S. registration as a basis for
Series 3 • Seminar 4 Tuesday, July 21, 2009
recognize a U.S. registration as a basis forregistering the mark in those countries. Manycountries maintain a register of trademarks.The laws of each country regardingregistration must be consulted.
What Every Dietary Supplement Business Should Know
International Issues
• Federal registration does not give internationalprotection.
• First to use vs. first to register.
• Paris Convention - a U.S. applicant can claim
Series 3 • Seminar 4 Tuesday, July 21, 2009
• Paris Convention - a U.S. applicant can claimdate of U.S. application as priority date forforeign protection if applicant files in foreigncountry within six months of U.S. filing date.
• Community trademark registration-27countries in the European Union.
What Every Dietary Supplement Business Should Know
International Issues
• Madrid Protocol - allows a U.S. applicant toseek registration in any of the membercountries by filing one application with theUSPTO and designating as many member
Series 3 • Seminar 4 Tuesday, July 21, 2009
USPTO and designating as many membercountries as it chooses.
What Every Dietary Supplement Business Should Know
International Issues
• Be careful how you describe and classify your products intrademark applications.
• In the U.S., dietary supplement products can be classified withconventional foods in classes 29, 30, 31 and 32, but class 5 isthe most common classification.
• Some foreign examiners view tablet products, and herbal and
Series 3 • Seminar 4 Tuesday, July 21, 2009
• Some foreign examiners view tablet products, and herbal andother supplements as medicinal products, and require theaddition of “for medical purposes” to class 5 descriptions.
• May have to protect supplements in classes 29, 30, or 32, orwork with trademark counsel to craft alternative acceptabledescriptions (e.g., dietary supplement “adapted formedical purposes excluding preparations intended todiagnose, treat, cure or prevent any disease.”).
What Every Dietary Supplement Business Should Know
Protecting Trademarks Through Proper Use
Series 3 • Seminar 4 Tuesday, July 21, 2009
What Every Dietary Supplement Business Should Know
Trademark Use Guidelines
• Use marks consistently – create brand use guidelines.
• Always use marks as an adjective (e.g., ONE A DAY® vitamins).
• Emphasize the marks (e.g., ONE A DAY® brand vitamins).
• Do not pluralize or make a mark possessive (e.g., BURGER KING® restaurantsor BURGER KING® restaurant’s).
Series 3 • Seminar 4 Tuesday, July 21, 2009
or BURGER KING® restaurant’s).
• Use proper trademark notices.
- e.g., use ® if mark is registered, TM for an unregistered mark, and SM for anunregistered service mark.
- e.g., “ONE A DAY is a trademark or registered trademark of BayerHealthcare LLC.”
• Monitor use of trademarks.
• Failure to use properly may result in loss of rights in the mark.
What Every Dietary Supplement Business Should Know
Series 3 • Seminar 4 Tuesday, July 21, 2009
What Every Dietary Supplement Business Should Know
Fighting “Genericide”
ASPIRIN
Series 3 • Seminar 4 Tuesday, July 21, 2009
What Every Dietary Supplement Business Should Know
Additional Ways to Weaken orLose Trademark Rights
• Abandonment.
• Assignment without goodwill (assignment ingross).
Series 3 • Seminar 4 Tuesday, July 21, 2009
• License without quality control (nakedlicense).
• Failure to police and stop infringement.
• Fraud.
What Every Dietary Supplement Business Should Know
Protecting Marks Through Enforcement
Series 3 • Seminar 4 Tuesday, July 21, 2009
What Every Dietary Supplement Business Should Know
Trademark Protection and Enforcement
• Monitor third-party registration and use.
• Demand letters.
• Opposition and cancellation proceedings.
Series 3 • Seminar 4 Tuesday, July 21, 2009
• Trademark infringement litigation.
• UDRP and ACPA.
What Every Dietary Supplement Business Should Know
Trademark Protection and Enforcement
• Monitor third party registration and use.
• Demand letters.
• Opposition and cancellation proceedings.
Series 3 • Seminar 4 Tuesday, July 21, 2009
• Trademark infringement litigation.
• UDRP and ACPA.
What Every Dietary Supplement Business Should Know
Thank You
Michael E. Mangelson ([email protected])Catherine Parrish Lake ([email protected])
Series 3 • Seminar 4 Tuesday, July 21, 2009
Catherine Parrish Lake ([email protected])Joshua G. Gigger ([email protected])