Presented by: Jane F. Collen Audra Kemp Govinda Davis Jeffrey A. Lindenbaum June 4, 2013

Trademarks

Trademarks such as words or symbols are an essential part of the “identity” of goods and services. They help deliver brand recognition and play an important role in marketing and communication. Trademarks are “Designations of Origin.” It is possible to register a variety of trademarks including words, graphical design logos, package designs, 3D images (shape of a specific package for instance) and even sounds.

Under U.S. Law, rights in a mark are created by using mark in commerce

(Registration is Not Required)

Different than Patent and Copyright Law (which do not require any commercial use)

Two “Partial” Exceptions: ◦ ITU Application ◦ Foreign/International Registration

Statutory rights Presumption of validity/ownership Commence rights by filing Public notice – avoid third party adoption Trademark Office will preclude others Incontestable after 5 years Enforcement! - Counterfeiting - Customs Recordal

PRIORITY: ◦ Precludes Others Who Obtain Rights After You

LIKELIHOOD OF CONFUSION ◦ Preclude another from using the same mark, or a

mark that is confusingly similar

Trademark Office – DUPONT Factors ◦ Similarity of Marks Appearance Sound Connotation/Commercial

impression ◦ Similarity of Goods/Services ◦ Similarity of Trade Channels ◦ Purchase Conditions (impulse) ◦ Fame of Prior Mark ◦ Similar Marks in Use ◦ Actual Confusion

New York – POLAROID Factors ◦ Strength of Plaintiff’s Mark ◦ Similarity of Marks ◦ Competitive Proximity of

Goods/Services ◦ Actual Confusion ◦ Likelihood to Bridge the Gap ◦ Defendant’s Intent (bad faith) ◦ Quality of Def’s Goods ◦ Sophistication of Purchasers

Is Mark Available ◦ Avoid Wasteful Investment in Marketing

Developing Unavailable Brand ◦ Evaluate Likelihood of Success of Obtaining

Registration ◦ Decide Whether to Publicize Use by Obtaining

Registration

All registered marks (Federal – PTO) Every state registration All unregistered uses ◦ Websites ◦ Trade journals ◦ Business directories ◦ D & B ◦ Advertisements

Internet domain names

THE MORE DISTINCTIVE/ORIGINAL

a brand, the “stronger” it is, and easier to defend

THE MORE DESCRIPTIVE a word, the “weaker” and more

difficult it is to defend

GENERIC NAMES are not protectable

& cannot be registered as a TM

Fanciful Trademarks Arbitrary Trademarks

Suggestive Trademarks

Descriptive Trademarks

Generic Trademarks

STRONG

WEAK

Terms that are either totally unknown in the language or are completely out of common usage at the time of adoption

Terms that are in common use, but don’t suggest or describe any quality or characteristic of the goods or services

FANCIFUL MARKS

ARBITRARY MARKS

However, marks that suggest rather than describe qualities of the underlying goods or services CAN function as trademarks

SUGGESTIVE MARKS

Marks that directly and immediately convey some knowledge of the characteristics of a product or service CANNOT function as trademarks

DESCRIPTIVE MARKS

CREME DE MENTHE for Chocolate Candies OATNUT

for Bread

FROSTY TREATS for Ice Cream Distribution

• Marks that are the name of a product or service can’t be a trademark!

• The function of a trademark is to identify and distinguish the goods or services of one seller from those sold by all others.

• However, a term can be a generic name of one thing but be a valid trademark for some other product

GENERIC MARKS

If not used well as a source-identifier, trademarks can lose their function and

BECOME THE GENERIC TERM

… losing all protectable legal rights!

The following list contains marks which were originally protected trademarks, but subsequently became the common name of the relevant product or service as used by the consuming public and commercial competitors.

Marks can retain trademark protection in some countries

despite being declared generic in others.

GENERIC MARKS

ALL NEWS CHANNEL

ANALOG DEVICES ART DECO ASPIRIN BABY OIL BATH OIL BEADS BODY SOAP BRASSIERE BRICK OVEN BUNDT CALL

FORWARDING CELLOPHANE CERTIFIED

REGISTERED NURSE ANESTHETIST

CHOCOLATE FUDGE

CHRISTIAN SCIENCE

CLIPPER COLA CONVENIENT

STORE CRAB HOUSE CUBE STEAK DISCOUNT

MUFFLERS DISINFECTABLE DRY ICE DUCK TOURS EASTER BASKET ESCALATOR E-TICKET SURGERY FIRST AID FIRST NATIONAL

BANK

GOLD CARD HOAGIE LIGHT BEER MATCHBOX MONOPOLY PASTEURIZED PILATES SHREDDED

WHEAT SHUTTLE SPACE SHUTTLE SUMMER JAM SUPER GLUE THE PILL THERMOS TRAMPOLINE YELLOW PAGES YO-YO

Trademark Edition Marks on the verge of “genericide” were saved by brand owners who emphasized the source

identification of their marks through targeted ads.

“Jeep – There’s Only One” “You Can’t Xerox a Xerox on a Xerox”

“Kleenex Brand Tissues” “I am stuck on Band-Aid Brand”

This emphasis “turned” the dying marks and they have

come “back to life” as trademarks.

© AMC

Pizza House

Pizza Shack

House of Pizza

Pizza Town

Checks Chess

Charters

Supersonic

Sonic House Speeders ZONE OF

PROTECTION

Burger Hut?

Becomes Generic Abandonment ◦ Lack of Use and Intention to Abandon ◦ Non-Use 3 Years = Presumption of Abandonment

Assignment Without Goodwill Naked Licensing Failure to Police ◦ Goes to Strength ◦ Until Generic

FILING

In the TM Office

SEARCHING TM office examines the

TM for prior registrations and eligibility to register

PUBLICATION If the TM is considered

as registerable

OPPOSITION PERIOD (30 days)

A prior TM owner may object the registration of

the TM

TM is refused

TM is registered

OPPOSITION PROCEDURE

At the TM Office: the parties litigate their

dispute (can take up to

36 months)

A registered TM is valid for 10 years from the date of registration (Canada 15 years). It can be renewed indefinitely for further periods of 10 years.

5 months 12 months

Owner of Mark Mark (Design, Stylized) Goods/Services Basis First Use Dates Specimens of Use ◦ Goods: label, tag, or container for the goods, or a display

associated with the goods ◦ Services: newspaper and magazine advertisements,

brochures, billboards, handbills, direct-mail leaflets, menus

Use of a trademark in United States commerce

A bona fide intention to use a trademark in United States commerce ◦ 3 years from date of allowance to prove use (or abandon) ◦ Six Month Extensions with fee

An existing foreign trademark application

or registration or international registration ◦ No use required for registration

Challenges to Mark ◦ Merely a Surname ◦ Scandalous ◦ Generic ◦ Descriptive ◦ Disclaimer ◦ Supplemental Register

Challenges to Description of Goods/Services Challenges to Specimen

Respond to Office Action ◦ Six Months to Respond

Other Options ◦ Co-existence ◦ Move to Cancel (suspend App) ◦ Acquire Prior User ◦ Appeal to TTAB or Fed Circuit

Trademark Office will not challenge or question truthfulness of application

While the USPTO rules require submission of only a single specimen for any one of the items in each Class listed in the registration, the signature on the declaration verifies that the mark is currently in use in connection with ALL the items listed in each Class

30 days for others to Oppose ◦ Or file extension to Oppose

After Opp. period ends – cannot be Opposed ◦ But may be Cancelled

If No Opposition – and Use Has Been

Established – Proceed to Registration!!

Post-Registration Maintenance Between the 5th & 6th year in the USA, must

file affidavit of use At the 10 year anniversary of the issuance of

the registration in the USA At each subsequent 10 year anniversary in

the USA

Opposition and Cancellation Proceedings

1. Oppositions: Is application entitled to register? 2. Cancellations: Can party maintain registration?

Good Cause: ◦ Automatic up to 90 days ◦ Automatic with consent for additional 60 days

Additional Extensions ◦ Require “Extraordinary Circumstances” Almost never found Safer to Oppose

If deadline missed – wait for registration and

petition to cancel

Pleadings Discovery Conference Discovery Motions Trial Briefing Oral Argument Decision Appeal

Notice of Opposition or Petition to Cancel ◦ Service Opposition on attorney of record Cancellation on Registrant

Answer or Motion Dismiss (40 Days) ◦ Affirmative Defenses ◦ Counterclaims (only to cancel)

Rule 15 for Amended Pleadings ◦ Liberal before close of discovery

30 Days After Answer is Due Opening of Discovery Period Must Discuss: ◦ Nature and basis of claims ◦ Settlement or narrowing claims ◦ Arrangements for Discovery Adjustments to limits from Federal Rules e-discovery Modifications to the Standard Protective Order ◦ Whether to participate in ACR

Request Board Participation (10 days prior)

Initial Disclosures ◦ Required before discovery requests are served

Document Requests/Admissions Interrogatories: 75 limit (incl. subparts) Depositions ◦ On written questions for foreign witnesses

Third party discovery – Fed. Court subpoena Experts

Same as Federal Court Litigation: ◦ Dismiss (Rule 12) ◦ Amend Pleadings (Rule 15) ◦ Compel/Protective Order (Rules 26) Meet and Confer Requirement See TBMP Sect. 414 (Guidelines for discovery disputes) ◦ Summary Judgment

No monetary sanctions ◦ Dismissal of action/Judgment ◦ Adverse inference ◦ Compel location of deposition/production, etc.

Pretrial Disclosures 30 Days/30 Days/15 Days No Courtroom Testimony by way of Depositions ◦ Oral or written questions ◦ Entire transcript of record (unlike discovery depo.)

Notice of Reliance ◦ Pleaded registrations ◦ Third party registrations ◦ Printed publications (Internet materials) ◦ Adversary’s discovery responses

Briefs: ◦ Opening/response/reply (no sur-replies) ◦ Cannot introduce evidence ◦ Must re-assert objections ◦ 55 pages for main brief (25 for reply)

Oral Argument ◦ Request within 10 days following reply ◦ Panel of 3 judges at PTO Headquarters ◦ 30 minutes per side ◦ Voluntary

Decision ◦ Typically 4-6 months after oral argument (or last

brief) ◦ Full written decision (probably not precedential)

Appeal (within 2 months of decision) ◦ Federal Circuit: Based on record at TTAB ◦ District Court May introduce new evidence May add claim for infringement

REGISTRATION LITIGATION Seeking to narrow Seeking to expand scope of mark to scope to establish overcome refusal infringement

28 U.S.C. Sec. 1331 ◦ The district courts shall have original jurisdiction of

all civil actions arising under the Constitution, laws, or treaties of the United States

28 U.S.C. Sec. 1338 ◦ The district courts shall have original jurisdiction of

any civil action arising under Act of Congress relating to . . . trademarks

15 U.S.C. Sec. 1114 ◦ Any person who shall, without the consent of the

registrant . . . use in commerce any reproduction, counterfeit, copy . . . of a registered mark in connection with the sale, offering for sale, distribution or advertising of any goods or services or in connection with which such use is likely to cause confusion, or to cause mistake or to deceive . . . shall be liable in a civil action . . .

15 U.S.C. Sec. 1125(a) ◦ Any person who . . . uses in commerce any word, term, name,

symbol . . . or any false designation of origin, false or misleading description of fact . . . which –

(a) is likely to cause confusion . . . as to the origin, sponsorship or approval of his or her goods, services . . . -or- (b) in commercial advertising or promotion misrepresents the nature, characteristics, qualities . . . of his or her or another person’s goods, services . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act

15 U.S.C. Sec. 1116 ◦ Courts . . . shall have the power to grant injunctions . . . to

prevent the violation of any right of the registrant . . . or to prevent a violation under subsection (a), (c), or (d) of section 1125 of this title.

15 U.S.C. Sec. 1117 ◦ When a violation of any right of the registrant of a mark .

. . a violation under section 1125(a) or (d) of this title or a willful violation under section 1125(c) of this title shall have been established in any civil action . . . the plaintiff shall be entitled . . . to recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) costs of the action.

◦ In assessing profits the plaintiff shall be required to provide defendant’s sales only; defendant must prove all elements of cost or deduction claimed.

◦ The Court in exceptional cases may award reasonable attorney’s fees

15 U.S.C. Sec. 1116(d) ◦ In the case of a civil action . . . that consists of using a

counterfeit mark . . the court may, upon ex parte application, grant an order . . . for the seizure of goods and . . . the means of making such marks, and records documenting the manufacture, sale or receipt of things involved in such violation.

15 U.S.C. Sec. 1117(b) ◦ In assessing damages . . . in a case involving use of a counterfeit

mark . . . the court shall, unless the court finds extenuating circumstances, enter judgment for three times such profits or damages, whichever amount is greater, together with a reasonable attorney’s fee, if the violation consists of (1) intentionally using a mark or designation, knowing such mark or designation is a counterfeit mark

15 U.S.C. Sec. 1117(c) ◦ In a case involving a counterfeit mark . . . the plaintiff may elect . .

. to recover instead of actual damages and profits . . . an award of statutory damages . . . in the amount of: (1) not less than $1,000 or more than $200,000 per countefeit mark per

type of goods or service sold; or (2) if willful, not more than $2,000,000 per counterfeit mark per type of

goods or services sold

Fictitious Contact Information

Single Lawsuit ◦ Join large number of websites/defendants ◦ Seize websites ◦ Terminate bank/payment accounts ◦ Seize assets

Electronic Service ◦ Via Email Avoid costly/time-consuming Hague Convention Avoid anonymity problem

Discovery

Stop Online Piracy Act ◦ Predecessors Combating Online Infringement and Counterfeits Act (COICA)

2010 Protect IP Act (PIPA) 2011

◦ Target: Foreign infringing sites through intermediaries: Search engines (Google, Yahoo!) Internet advertising services (Google Adwords) Payment processors (Visa, MasterCard) Internet service providers (Verizon, Comcast)

◦ Wide opposition to legislation – attacks freedom of expression and stability of Internet, shifts duty to monitor

• Domain names are used in place of IP addresses as a practical matter, because IP addresses may be difficult to remember

• IP addresses become human readable domain names through a mnemonic device known as the Domain Name System (DNS) o 207.151.159.3 → www.google.com

o 107.252.354.0 → www.cnn.com

o 982.143.123.2 → www.wsj.com

o 458.238.018.8 → www.collenip.com

Domain names have various “levels” www.google.com TLD/First Third Second www.sos.state.oh.us Fifth Fourth Third Second First (ccTLD)

• Domain names can be registered through many different companies (known as “Registrars")

• A Registrar is a company accredited by ICANN and/or by a national ccTLD authority to register Internet domain names

• Registrars each have their own terms and policies, which should be considered when selecting a Registrar

• Trademark infringement based on allegation that defendant's online commercial activities create a likelihood of confusion of domain name

• Cybersquatting o Example: PepsiCentral.com, Pepso.com or

wwwWalmart.com o Example: Wallmart.com (typosquatting)

• Federal Lawsuit • File in U.S. District Court

• Cause of Action: Trademark infringement under

Lanham Act and/or for Common Law Infringement, Dilution

• Relief: o Injunction (Preliminary or Permanent) o Compensatory Damages o Possibility of Attorney’s Fees (Exceptional Case)

• Cybersquatting Claim - Cybersquatting Act 15 U.S.C. § 1125(d)

oMust show:

(1) Mark is distinctive or famous;

(2) Domain is confusingly similar to the plaintiff’s

mark; and

(3) Domain was registered, trafficked in or used with bad faith to profit from mark.

• Factors Considered by Courts for Finding of Bad Faith: o any rights in the domain name; o whether domain name is the legal name of person; o person’s prior use of domain name for bona fide offering of goods

and services; o person’s intent to divert consumers from the mark owner’s online

location either for personal gain or to tarnish mark; o person’s offer to transfer, sell or otherwise assign the domain

name to the mark owner or third party for financial gain without having used, or having an intent to use for bona fide purposes;

o providing false contact information at registration; o acquisition of multiple domain names that are similar to marks of

others; o whether mark used in domain name is famous

Remedies (15 U.S.C.A. §43(d):

oorder the domain name forfeited, canceled

or transferred to the owner of the trademark;

oinjunctive relief; odamages up to $100,000 per domain name

Uniform Domain-Name Dispute-Resolution Policy (“UDRP”)

• A process established by Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names

• Currently applies to generic top level domains, and some country code top-level domains (.com, .net, .biz, etc.)

• A streamlined process for resolving such disputes, which would be quicker and cheaper than a standard legal challenge

UDRP Proceeding: • Initiate by filing complaint and paying fee • Defendant is served and provided the opportunity to answer

the complaint • No hearings conducted in these proceedings • Typically resolution is reached within two months of filing • If Defendant does not answer, arbitrator will review evidence

and determine if complainant met its burden • The fee of $1,300 or $1,500 is for a single panelist. If you

would like the matter presided by a three-judge panel the filing fee is $2,600 or $4,000

Burden of Proof in UDRP Proceedings Complainant must establish (Paragraph 4(a) of the

UDRP): • That the Respondent’s Domain Name is identical or

confusingly similar to a trademark or service mark in which Complainant has rights;

• That Respondent has no rights or legitimate interest in respect to the Domain Name; and

• That Respondent’s Domain Name has been registered and used in bad faith.

UDRP Remedies: • Cancellation of registrant’s domain name, • Transfer of registrant’s domain name registration

to the complainant, or • If Complainant fails to meet its burden, Registrant

keeps registered domain name. • Either party may submit the dispute to a court of

competent jurisdiction for independent resolution before commencement of the UDRP proceeding or after such proceeding is concluded

Unlimited Top Level Domains ◦ Expand the number of TLDs Currently .com, .gov, .net, .edu, .info, .biz, etc. ICANN received 1930 applications for new gTLDs

Reasons – expansion of growing internet presence, choice and competition in the market place, and cultural inclusion ◦ Examples: .Pepsi, .shopping, .movies

Non-Latin Characters (Cyrillic, Arabic, Chinese or accented letters) ◦ . 香港 instead of .hk for Hong Kong domains

Domain Owner becomes own registry (business commitment) ◦ $185,000 evaluation fee ◦ $25,000 per year to operate as a registry

1st Round Application Submissions - Jan. 12, 2012 to Apr. 12, 2012

Initial Evaluation ◦ Background check, financial capability, geographical names

Extended Evaluation (if applicant does not pass the Initial Evaluation) ◦ Technical specifications, registry services

Dispute Resolution – 7 month window to object ◦ Confusion, legal rights, public interest, community objection

(comments), independent objection (formal objection) Open comment period 60 days Government comments regarding national law

String Contention ◦ Security problems or confusion with existing top level domains

Formal Objection – could bar registration Reasons for Objection ◦ String confusion - applied for gTLD is confusingly similar to an

existing TLD or another applied for gTLD Other TLD operator or between two applicants where ICANN has not found

confusion in the Initial Evaluation ◦ Legal rights – applied for gTLD infringes the objector’s existing legal

rights Registered or undregistered trademark holders may object

◦ Limited public interest – applied for gTLD is contrary to the generally accepted legal norms recognized under international law Examples: Incitement to or promotion of violent lawless action or

discrimination ◦ Community objection – substantial opposition to applied for gTLD

from a significant portion of the community

Objection - $10,000 fee (per ground objection per domain)

Objections must be filed with the appropriate Dispute Resolution Organization: (based on the ground) ◦ String Confusion - International Centre for Dispute

Resolution ◦ Legal Rights- WIPO ◦ Limited Public Interest/Community Objections -

International Center of Expertise of the International Chamber of Commerce

Jeffrey A. Lindenbaum Ph. 914-941-5668 jlindenbaum@collenip.com www.collenip.com

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