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Reviewing a Search Report and Drafting an Opinion Letter

Amie Peele CarterBaker & Daniels LLPIndianapolis, IN

Rick Gilmore Maschoff Gilmore & IsraelsenPark City UTPark City, UT

Jon GelchinskyFinnegan Henderson Farabow

Garrett & Dunner, LLPCambridge, MA

Client Background

• Client is XYZ, Inc.

• Proposed mark is ACME + _____

• Client has approached you with a list of several possible ACME derivatives:

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• Proposed services: banking and credit card services

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Advising Your Client• Before you can render advice, do a conflicts check

• Suggest a search for ACME alone to narrow the list of potential marks

• Explain possibility of crowded field of ACME marks

• Explain generic/descriptive nature of some of the derivative terms

• Mention that banks have to have their names approved in separate administrative manner

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• Explain that clearing a trademark does not mean it is also clear for registration in a state as a corporate name or for a state trademark registration

• Ask about services, if they will be more narrow than described; while search will be broad, it will be helpful to know if they plan to focus services in any way

Ordering the Search

• Explain types of searches:Exact "knock out" search Exact knock out search Preliminary searchComprehensive search – details

• Confirm selection of mark and limitations on what the search/opinion can be (i.e., since search is for ACME, cannot officially opine on an ACME derivative mark)

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• Confirm broad identification of services, and whether a "financial and insurance services" search is in order (and discuss briefly the fact that you can order an industry-based search rather than one based on a specific identification of goods/services in some instances)

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Anatomy of the Search Report

● Generally organized by source:F d l (PTO)● Federal (PTO)

● State● Common law (includes business names,

various industry databases)● Domain names● Web common law

● Some vendors provide option to organize

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● Some vendors provide option to organize according to relevance

● Opinion letter: discuss most relevant references first, not necessarily federal

Anatomy of the Search Report, cont’d.

• Each section contains:scope and limitations of the databases searchedsearch querysummary of hits

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Inside the Cover• Check the information:

markmarklist of goods/services searchedthat you received the product you ordered

p. 3

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Search Query

• Carefully review the search strategy l d b th h employed by the search company

p. 7

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Search Query, cont’d.

• Exact “hits”

• Spelling variations

• Letter strings

• Goods/services and classes searched

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• Goods/services and classes searched

• Translations

Scope and Limitations

• Dates of latest filed applications (see p. 5)

• Paris Convention - up to six months of priority

• Opinion letter: set out the limitations, i t b f tt h

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incorporate by reference, or attach information sheet

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FEDERAL REFERENCESFEDERAL REFERENCES

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Reviewing the Search Report –Federal References

p. 13

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Reviewing Federal References

• Number of exact “hits” for the markSame, related, or other International Classes

• Spelling variations included by analystSimilar spelling?Similar pronunciation?Other spelling variations?

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Other spelling variations?

• Number of “hits” for spelling variationsSame, related, or other International Classes

Trademark Registration –Likelihood of Confusion Test

• Proposed mark not entitled to registration if t “lik lih d f f i ” ith if creates a “likelihood of confusion” with any prior registration or pending application

• Refusal under Section 2(d) – Examining Attorney’s conclusion that applicant’s mark as used on or in connection with

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mark, as used on or in connection with the relevant goods or services, so resembles a registered mark as to be likely to cause confusion

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Trademark Registration –Likelihood of Confusion Factors • PTO uses multiple-factor test set forth in In re

E I du Pont de Nemours (CCPA 1973)E.I. du Pont de Nemours (CCPA 1973)

• During ex parte examination, the first two factors—similarities of the marks and similarities of the goods/services—are usually the focus

• Other factors often considered during ex parteexamination:

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examination:Similarities of the trade channels“Impulse” v. careful, sophisticated purchasingNumber and nature of similar marks in use on similar goods

Trademark Registration – Likelihood of Confusion Practice Tips

• Trademark Examiner must consider the goods or services as listed in the goods or services as listed in the registration or application

• Doubts are resolved in favor of the cited registration or application

• Each case is decided upon the specific

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p pfacts of that case:

Different examining attorneys may come to different conclusionsPossibility of inconsistent results

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Trademark Infringement –Likelihood of Confusion Test

• Infringement of federally registered marks is decided based on whether defendant’s is decided based on whether defendant s mark is “likely to cause confusion, or to cause mistake, or to deceive.” Lanham Act § 32, 15 U.S.C. § 1114(1)

• Different courts may use slightly different tests, but they essentially involve the same factors (see Polaroid Corp. v. Polarad

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factors (see Polaroid Corp. v. PolaradElectronics Corp., 287 F.2d 492 (2d Cir. 1961))

Federal ExamplesFederal Examples

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ACME AMERICAN REWARDS

p. 24

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ACME AMERICAN REWARDS

• ACME portion of the mark is identical

• Services are identical

• Registrant is owner of ACME marks covering various goods and services

ll d d 8 2006

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• Registration cancelled under § 8 in 2006

• Cancellation under § 8 does not mean mark is not in use

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Investigate

• Is the mark still in use?

• If not, when was the last use?

• If no use, does registrant have plans to resume using the mark in the future?

• Section 45 of the Lanham Act defines “abandonment” as non-use with intent not to

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abandonment as non-use with intent not to resume use

• 3 years non-use creates rebuttable presumption of an intent not to resume use

ACME SUPERCARD

p. 42

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ACME SUPERCARD

• ACME portion of the mark is identical

• Services are different (banking and credit card services vs. promoting goods and services of others through discount cards)

• Active registration, renewed in 2007

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• Registrant is owner of ACME marks covering various goods and services

ACE

p. 112

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ACE

• Slight differences in appearance (ACME vs. ACE)ACE)

• Significant differences in pronunciation and meaning

• Services are identical or closely related

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y

• Registrant has history of being litigious before the TTAB (pp. 112 – 113)

Exercise 1

• Please take 5 minutes to browse through federal section and chose 3 more references you consider relevant

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ACME CHECKS

p. 31

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ACME CHECKS

• ACME portion of the mark is identical

• Complementary goods and services

• Abandoned for failure to respond

Need to investigate whether mark is in use

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• Need to investigate whether mark is in use

• ITU filing basis does not mean mark was never in use

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ACM

p. 82

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ACM

• Meaning of the mark – appears to be an acronym f “A ill C M t”for “Ancillary Care Management”

• Arguably creates a different overall commercial impression (sound, sight, meaning)

• Services in International Class 36, but they are arguably distinct

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arguably distinct

• Differences in the marks together with differences in the services should be sufficient to avoid a likelihood of confusion

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Consider Limiting Services

• You might advise the client to consider limiting its services to banking and credit card services due to the number of relevant hits for insurance and other financial-related services

• This could be an issue if the client later

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• This could be an issue if the client later intends to expand its initial proposed offerings

Narrow Scope of Protection forWidely Used Marks

• Widely used marks like ACME will likely be entitled to only a very narrow scope of protection in view of such a crowded field

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STATE AND COMMON LAW STATE AND COMMON LAW REFERENCES

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Process for Analyzing Relevant References

• Does reference identify a trademark?

• Is it your client?

• What is the geographic location of reference?

h f d h l

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• Does the information indicate how long the company may have been in business?

• Note other limitations on information provided

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Process for Analyzing Relevant References, cont’d.

• What additional information might be needed?

• How do you obtain that information?Further searchingHiring vendor to search/investigate

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• Importance of discussing with client, before rendering opinion – industry knowledge

Common Law References -Foreign Marks and Names

• Marks and names for non-U.S. entities only relevant if mark used “in commerce”only relevant if mark used in commerce

• Use common sense in determining which to investigate• Geographic proximity to U.S.• Type of goods or services that could be

provided into the U.S.Heavily regulated industry (e g banking and

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• Heavily regulated industry (e.g., banking and financial)

• www.acme.travel (p. 296)• Travel agency located in Sri Lanka

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Common Law References -Domain Names

• Used for a website promoting or providing actual goods or services?actual goods or services?

• Or does it connect to:• Registrar’s placeholder or “coming soon” page • For sale page• Sponsored listings and links• Inactive website

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• Mere registration of a domain name does not confer protectable trademark rights

Common Law References -Domain Names, cont’d.

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Common Law References -Domain Names, cont’d.

acme.net – p. 307

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Common Law References -Domain Names, cont’d.

• Look at WHOIS information:• U.S. or foreign owner?• competitor?• cybersquatter?

• Check Wayback Machine at www.archive.org

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g

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Common Law Rights

• Common law rights are developed through use of the mark in commercethrough use of the mark in commerce

• Common law rights are limited to the geographic area in which the mark is used

• Since no registration is required to

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g qestablish common law rights, common law rights may have to be individually addressed

State and Common Law State and Common Law Examples

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ACME MORTGAGE

p. 195

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ACME MORTGAGE

• Portion of the mark identical (ACME vs. ACME MORTGAGE)ACME MORTGAGE)

Descriptive wording (MORTGAGE)

• Same International Class (IC 36)

• Similar services (Banking and credit card services vs banking and financial services)

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services vs. banking and financial services)

• Investigate to see if mark is still in useIs use limited to Colorado?

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ACME FEDERAL CREDIT UNION

p. 248

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ACME FEDERAL CREDIT UNION

• Portion of mark identical (ACME vs. ACME FEDERAL CREDIT UNION)FEDERAL CREDIT UNION)

Descriptive wording (FEDERAL CREDIT UNION)

• Limited information available (federally chartered credit union)

• In business 10 years according to report

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• In business 10 years according to report

• Investigate to see if mark is still in useIs use limited to Ohio?

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ACME.COM

p. 302

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ACME.COM

• Identical mark used as a domain nameMay or may not confer trademark rightsDoes your client have intent to use domain name?

• Numerous top level domain names Many more expected to be available soon

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• Dynamic nature of the Internet

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Common Law - Prioritizing Risks

• Add value for the client, more than just knowledge transferknowledge transfer

• Be practical

• Don't gloss over references because you want to give a “clear” opinion – common law references can be important

• Communicate with your client – he/she likely

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• Communicate with your client he/she likely knows the relevant industry better than you do

• Consider that your opinion on use may differ than your opinion on registrability

Exercise 2

• Please take 5 minutes to browse through state and common law section and chose 3 more references you consider relevant

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ACME BUILDING BRANDS, INC.

• Portion of mark identical, similar services

p. 195

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ACME LENDING INC.

• Portion of mark identical, similar services

p. 244

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AKME.BIZ

Web capture is blank in report, but actual website reveals distinguishable servicesreveals distinguishable services

p. 338

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Other Considerations

• Offensive v. defensive approach to counseling clients (importance of being a trusted advisor)clients (importance of being a trusted advisor)

• Conflicts issues

• When appropriate NOT to recommend a comprehensive search

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• A mark might be clear for use but not registration

• Remember to also consider dilution

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Opinion Letter Considerations

• Privileged, but treat as discoverable

• Opine on chances of ultimately prevailing in a challenge, not on likelihood of receiving an objection; though discuss 3rd parties that are more likely to object

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• State any conditions on use/registration (use together with house mark or design, narrow goods/services)

Opinion Letter Considerations, cont’d.

• Be careful how you refer to 3rd party marks di d i th l tt if l i “ f discussed in the letter – if clearing, say “of interest” as opposed to “problematic”

• Explain what steps you took outside of the search report (website, investigation, TTAB/PTO file history)

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• Remember - the test is likelihood of confusion so don’t say “shouldn’t cause confusion”

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THANK YOU

Rick Gilmore: 435-252-1371

Amie Peele Carter: 317-237-1180

Jon Gelchinsky: 617-452-1642

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