Trademark Law 101

Steven EspenshadeErik Combs

February 24, 2015

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A Trademark is an IdentityIdentity

2®®

The main purpose of a trademark is to identify and distinguish the source of a product from that of other products . . . just like your own name identifies and distinguishes you.

TMTM

Trademarks become valuable when the reputation associated with a mark becomes ingrained in consumers’ minds and designates a single source.

What can be a Trademark?

• Words: BEVO, DELL– Slogans:

• A Diamond is Forever• Hook ‘Em Horns

• Letters and/or Numbers: UT, 365 EVERYDAY• Logos • Designs

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What can be a Trademark?

• Packages (“Trade Dress”) – Coca-Cola bottle, H2Orange bottle

• Personal Names– Stevie Ray Vaughan®

• Nicknames– Johnny Football™

• Buildings – The UT Tower• Colors – Pink for insulation• Smells – Chanel perfume• Sounds – MGM tiger roar

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Types of Trademarks

• Trademarks are generally classified on a scale of distinctiveness as one of five different types: – Fanciful– Arbitrary– Suggestive– Descriptive– Generic

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Fanciful Marks

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Fanciful marks are coined or “made-up” terms that have no dictionary meaning

Arbitrary Marks

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Real words with no meaning in relation to the products or services with which they are used

Suggestive Marks

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Marks that suggest, but do not go so far as to describe actual goods or services or their

characteristics

Descriptive Marks

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• Marks identifying a characteristic or quality of the goods or services with which they are used

• Not registrable on the Principal Register without a showing of acquired distinctiveness, but could be on the

Supplemental Register

SEAR ‘N SMOKE

WRING ‘N LOCK

Generic Terms

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The common name of the article or service to which it applies

cellophane

aspirin

thermos

escalator

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What You Should NOT Do with Trademarks

• Trademarks should not be altered in any shape or form

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Trademarks are Adjectives

• Trademarks are always adjectives and should be followed by nouns

• Trademarks are never nouns or verbs, and in general should not be used alone.

• Trademarks should be followed by a generic term:

Chapstick®® Lip Balm Lip BalmPost-ItPost-It®® Notes Notes

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Which of the Following Uses of the Trademark are Correct?

• 1- I need to buy a Band-Aid®

• 2- I need to buy Band-Aids®

• 3- I need to buy Band-Aid® bandages

• 4- I need to Band-Aid® my cut

• 5- How much do the Band-Aids® cost?

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• 1- I need to buy a Band-Aid®. • 2- I need to buy Band-Aids®. • 3- I need to buy Band-Aid® bandages.• 4- I need to Band-Aid® my cut. • 5- How much do the Band-Aids® cost?

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Why is it important to use a mark properly?

• Trademark rights can be lost through improper use …– A trademark owner’s advertising and labeling mistakes– Misuse by the public

- Escalator – By being used as a generic term by the public, the trademark became the name of the

product instead of denoting the brand of the product

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QUIZ: Which of the Following Used to be Registered Trademarks?

• • NylonNylon • Linoleum• Linoleum• • KeroseneKerosene • Hoagie• Hoagie• • TrampolineTrampoline • Aerobics• Aerobics• • ZipperZipper • Super Glue• Super Glue• • ColaCola • Yo-Yo• Yo-Yo• • AspirinAspirin • Jujubes• Jujubes

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ALL of them!

Trademark Law Practice- Transactional

• Trademark Clearance

• Filing and Prosecuting Trademark Applications

• Maintenance of Trademark Registrations

• Licensing

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Trademark Clearance

• When Is Clearing a Trademark Important?– Defensive

• Can the mark/term be used safely or with acceptable risk?

– Offensive• Can the mark be “owned” and enforced against others?

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• Determine if the mark is inherently registrable • Conduct a preliminary search for each

mark/term• Conduct a full search for the best mark(s)

looking for prior users/registrants of same or confusingly similar marks

• Interpret, acquire, resolve issues • Get an availability opinion

Filing and Prosecuting Trademark Application

• U.S. Registration– Application provides “constructive use”;

nationwide priority– Federal trademark registration does not vest rights– Federal registration provides constructive notice,

legal presumptions (mark is valid, etc.)– Use of ®– With use, federal trademark rights can endure

forever

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Principal versus Supplemental Register

– Supplemental Register is for descriptive marks capable of acquiring distinctiveness

– Benefits of the Supplemental Register:• Can use the ®• Prevents others from registering confusingly similar marks• Deters others from adopting similar marks because length of time it takes to

acquire distinctiveness varies greatly• Requires use of the mark - no intent to use on the Supplemental Register

– Disadvantage of the Supplemental Register:• Difficult to take action against another using the same mark• Registration cannot become incontestable

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Filing a Trademark Application

• Information & Materials Required:– Mark to be registered (standard character v.

stylized/design mark)– Owner information– Description of Goods and Services– Filing Basis:

• Use in Commerce, Intent-to-Use, Foreign Registration– Date of First Use / Specimen - Use based only– Signed Affidavit

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Prosecuting a Trademark Application

• Examination by Examining Attorney at USPTO.• Substantive Refusal to Register:

– Likelihood of confusion:• ALAMO DRAFTHOUSE CINEMA v. ALAMO CAFÉ• MONDO (posters, shirts) v. MONDO (musical records for

children)

– Mere Descriptiveness:• ENERGY CRUNCH for trail-mix• RAINFOREST PARTNERSHIP for charitable services relating to

rainforests.

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Prosecuting a Trademark Application

• Other Grounds for Substantive Refusal:– Primarily Geographically Descriptive

• WESTLAKE MEDICAL CENTER– Deceptively Misdescriptive

• BLACK FLEECE for “various clothing items ‘not made of fleece fabric’”

– Primarily Merely a Surname• ACTON SCHOOL OF BUSINESS

– Scandalous / Disparaging• I BANGED BETTY• REDSKINS; SQUAW

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Prosecuting a Trademark Application

• Grounds for Non-substantive Refusal:– Disclaimer– Objection to description of goods/services– Objection to submitted specimen

• Ornamental / Does Not Function as a Trademark

– Objection to submitted description of mark– Application unsigned– Entity information unclear

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Prosecuting a Trademark Application

• After Examination – Remaining Steps:

– Publication for Opposition

– Statement of Use if Intent To Use Application

– Registration

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Maintenance of Trademark Registration

• “Section 8” Declaration of Use filed between the fifth and sixth year of registration

• “Section 9” Renewal filed on the 10-year anniversary of registration

• Additional filing each 10-year anniversary thereafter

• Section 15 Declaration of Incontestability after 5 years of continuous use

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Licensing

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Licensing

• Must have Quality Control

• Scope of Permitted Use, Term, Royalties, Phase-Out, Warranties, Indemnities

• May Include Other Rights – Copyrights, Broadcast Rights, etc.

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Trademark Infringement and Dilution in the U.S.

• Standard for trademark infringement: Likelihood of Confusion– Analysis of various factors including similarity of marks,

similarity of products, trade channels, strength of the mark, level of fame, etc.

– Litigation is expensive and attorneys’ fees rarely awarded

• Standard for trademark dilution: Likelihood of Dilution– Owner of a famous trademark entitled to injunction against

another’s use beginning after owner’s mark became famous, if use is likely to cause dilution of the distinctive quality of the mark

– Applies even if the goods or services are completely different

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Trademark Law Practice- Policing

• A trademark owner has a duty to actively police its trademark:– Unchallenged third party uses of a trademark can

weaken the strength of a trademark as an identifier of the owner’s goods or services, which in turn weakens the owner’s ability to later enforce the trademark and devalues the worth of the mark.

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Trademark Law Practice- Policing

• Monitoring Service, i.e. Watch Notices– What to watch: Marks/domain names– Scope: Worldwide/ specific countries

• Client/employee observations

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Trademark Policing

Considerations:– Where has the client established rights? Does

client intend to enter the market in question?– Where is the potential infringer applying for/using

the mark at issue?– General likelihood of confusion analysis (similarity

of marks, relatedness of goods or services, channels of trade, dilution of terms)

– Local practice

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Trademark Policing- Taking Action– First step:

• Cease and Desist Letter• Notice of Rights Letter

– Second step:• Consent Agreement • Opposition• Cancellation• UDRP complaint

– Third step• Lawsuit

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Trademark Policing

• Level of policing/enforcement varies by client.

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163163(That’s a TTAB filing every 1.75 days)

From January 1, 2009 through October 12, 2009

Trademark Law Practice- Litigation

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UMAMI?

Trademark Law Practice- Litigation

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Questions & Answers

The End…

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