protecting brands & intellectual property (ip) in …

© 2016 Venable LLP

PROTECTING BRANDS & INTELLECTUAL PROPERTY (IP) IN THE PERSONAL CARE INDUSTRY

Justin Pierce

May 5, 2016

© 2016 Venable LLP

OUTLINE:

• IP Basics and the Importance of Multi-layering IP Rights

• Examples of Brand IP Enforcement in the Personal Care

Industry

• Best Practices

Protecting Brand IP in the Personal Care Industry

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IP Basics

• Patents, Trademarks & Copyrights

– People often confuse these rights. While there are

some similarities, these IP rights are different and

serve different purposes.

– These rights can coexist and do not have to be

mutually exclusive. For example, in any one

product, more than one form of IP protection may

apply, as long as it meets the requirements of the

laws that govern that form of protection.

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• Patent protection is provided for inventions

and industrial designs (and even plants).

• A patent gives the inventor the exclusive right

to exclude others from making, using,

offering for sale or selling the invention.

• Different types of patents have different

terms:

– Utility patents have a 20-year term.

– Design patents have a 14-year term.

Patents

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• Trademark protection is afforded to words or

designs that are used to distinguish the

source of the goods or services from the

goods or services of others.

• A trademark gives the owner the right to

prevent others from using a confusing, similar

mark.

• Trademark rights may continue indefinitely.

Trademarks

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• Copyright protection is afforded to authors of “original works of authorship,” including literary, dramatic, musical, artistic and certain other intellectual works.

• A copyright gives the owner the exclusive right to do certain things, e.g., copy the work, adapt the work and distribute copies of the work.

• Copyright terms (for works created on or after January 1, 1978).

– Individual: life + 70 years

– Work made for hire: 95 years from publication or 120 years from creation

Copyright

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Trade Secrets

• Trade secrets consist of information (formula, pattern, compilation, program, device, method, technique or process) that derives independent economic value from being a secret, and is kept secret through reasonable efforts.

• Term: protection continues as long as it stays secret (indefinite).

• Unlike other IP, historically covered by state law rather than federal.

• But Congress just passed the Defend Trade Secrets Act of 2016 (DTSA) on April 27, 2016, providing for a new federal cause of action for trade secrets theft. This expands trade secret protection to address a growing concern of companies operating across state and national borders with highly valuable trade secrets.

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• An ornamental design may be protected by

copyright as a work of art and also may be the

subject of a design patent.

– Example: ornate packaging design

• Where a copyrighted artistic representation

identifies a product or service, it also may be the

subject of a trademark.

– Example: an artful logo

Multi-layering IP Protection

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• Depending on the features of the “intellectual property” in question, it may be covered by:

– Patent protection

• Design 14 years, or

• Utility 20 years.

– Copyright protection:

• Life + 70, or

• Works made for hire, 95 or 120.

– Trademark protection

• Indefinite


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• Patents, trademarks, copyright:

– Different types of protection

– Different terms of protection

• Thus, the “exclusive” use of the creation, design, or invention may be extended if:

– It covers more than one type of IP.

• Exception: trade secret v. patent protection

– Mutually exclusive


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Brand IP Enforcement Examples (Trademark)

Moroccanoil, Inc. v. Marc Anthony Cosmetics, Inc. (2013)

Hair care product distributor (Moroccanoil) brought an action against

competitor (Marc Anthony Cosmetics) alleging trademark infringement and

trade dress infringement for use of the term “Moroccanoil.” Court determined

that the term “Moroccanoil” was not generic and denied defendant’s motion

for summary judgment, and also found plaintiff's trade dress to be inherently

distinctive.

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Plum Island Soap Co., LLC v. Danielle and Co., Inc., (2011)

Plaintiff (Plum Island) manufactures soaps and scents marketed

towards men; it advertises a product called “The Man Can,” and

sued (seeking a preliminary injunction against) competitor

(Danielle and Co.) alleging trademark infringement of the term

“The Man Can.” Defendant manufactures soaps and shampoos for

men called “The Manly Man Can,” “The Classic Man Can,” and “The

Modern Man Can.”

Court granted injunction as the design of the parties’ products are

remarkably similar; both companies sell similar products marketed

towards men; there was evidence of actual consumer confusion;

and plaintiff had been using the mark for 5 years before defendant

began its line of products.

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Grayson O Co. v. Agadir Int'l LLC, (2015)

Hair care product manufacturer (Grayson O) brought action against defendant competitor (Agadir) alleging trademark infringement based on Agadir’s inclusion of the temperature “450°” as part of the name of it's product line. Grayson O owns a trademark registration for the mark “F 450” for use in connection with hair care products.

Court granted defendant Agadir’s motion for summary judgment because it found insufficient evidence to establish that defendant was trying to capitalize on plaintiff's mark or that defendant otherwise had an intent to mislead or cause consumer confusion, especially given the distinction in the packaging and the common use of “450” in marketing products designed to protect hair from high temperatures. The court also noted that there was little evidence of actual confusion.

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Brand IP Enforcement Examples

(Design) Anderson v. Kimberly-Clark Corp., (2014)

Plaintiff (pro se individual) is the owner of a design patent for an absorbent disposable undergarment. Plaintiff brought infringement action against Kimberly-Clark for its “Depends” and “Goodnite” brand absorbent undergarments.

Court ruled in favor of Kimberly-Clark and found that the accused products did not infringe design patent. The court compared the asserted design patent to the photographs of the accused products, submitted by defendant, and concluded that “plain differences” exist between the accused products and the patented design.

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Brand IP Enforcement Examples

(Trade Secret)

Givaudan Fragrances Corp. v. Krivda, (2016)

Givaudan Fragrances creates and produces

fragrance compounds for fine fragrances and

perfumes. Givaudan sued a former employee and

his new employer, alleging trade secret

misappropriation, specifically claiming the former

employee stole more than 600 fragrance formulas

before leaving Givuadan’s employment.

The Court ruled in favor of defendant Krivda finding

that plaintiff Givaudan failed to prove that

defendant violated his employment contract or that

any of Givaudan’s formulas were misappropriated.

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Best Practices in Protecting Brand IP

• Systematically secure all IP rights and, where possible, record these rights

with Customs in all jurisdictions where your company manufactures,

distributes, and/or has plans to expand.

• Invest in and use multi-layered IP protection for your key products and/or

services.

• Take trade secrets seriously. Maintain the right protocols for securing trade

secrets; and when you take on new employees, ensure that they are not

using others’ trade secrets.

• Constantly look to assess and improve your brand protection measures in

order to keep up with sophisticated competitors, counterfeiters, infringers

and pirates; this includes keeping pace with current in trends e-commerce,

technology and media (e.g. social media, emergence of dark web, 3D

printing, new online marketplaces).

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