Structuring Trademark Clearance Opinions

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1 Presenting a live 90-minute webinar with interactive Q&A Structuring Trademark Clearance Opinions Assessing Search Results to Identify Infringements, Overcoming Clearance Challenges, Preparing Opinions to Reduce Legal Risks THURSDAY, MARCH 1, pm Eastern 12pm Central 11am Mountain 10am Pacific Today s faculty features: Richard C. Gilmore, Registered Patent Attorney, Maschoff Brennan, Park City, Utah George R. McGuire, Member, Bond Schoeneck & King, Syracuse, N.Y. The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions ed to registrants for additional information. If you have any questions, please contact Customer Service at ext. 1.

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5 Structuring Trademark Clearance Opinions Richard C. Gilmore March 1, 2018

6 Introduction to Trademark Searching Trademark Searches provide: Basis for opinion But keep limitations in mind 6

7 A Trademark Search should help determine: 1. If a mark is available for use 2. If a mark can be registered 3. Potential strength of the mark 7

8 Why Conduct a Trademark Search? Identify Risks Reduce Costs Avoid rebranding Avoid litigation Expedite prosecution of application 8

9 Who Should Consider a Trademark Search? 1. Any client adopting a new mark 2. Clients with existing trademarks Availability and protectability of the mark Expanding trademark into other marketplaces Business transactions, including mergers and acquisitions 9

10 What Information is Needed for the Search? Nature of the Specific Trademark Word(s) DRINK COKE Logo Stylized Script Combination 10

11 What Information is Needed for the Search? If it is not English Origin and Meaning Word origin: Spanish Meaning: Boss 11

12 What Information is Needed for the Search? If the mark includes an acronym, what does it stand for? Bavarian Motor Works 12

13 What Information is Needed for the Search? Examples of the way it will be used 13 Websites Merchandise

14 What Information is Needed for the Search? Complete list of Goods and Services 14

15 What Information is Needed for the Search? Budget Resources to search Review of the search results Investigation into marks of particular interest 15

16 What Information is Needed for the Search? Deadline for the results Scope of search may affect timing It may be necessary to investigate risks posed by specific marks 16

17 What Information is Needed for the Search? Level of review of search results Simple identification of relevant marks identified in the search Evaluation of the results Formal legal opinion 17

18 How Much Time Should be Allowed? Timing requirements Searching should commence well in advance of the product launch Additional time may be required for investigation of potential risks More time will be required if adverse results are received 18

19 Types of Trademark Searches Preliminary or Knock Out Searches 1. U.S. Patent and Trademark Office records 2. Internet searches Identical marks Obvious spelling variations Same international class Similar goods/services 19

20 Types of Trademark Searches Full or Comprehensive Search includes: U.S. Patent and Trademark Office records State Trademark Office records Common Law uses of the mark 20

21 Types of Trademark Searches Full or Comprehensive Search includes: Identical marks Phonetic equivalents Plural forms Reversal of terms Similar character strings Similar word formatives Similar look, sound, and/or meaning Similar in length Acronyms/Word equivalents 21

22 Types of Trademark Searches Full or Comprehensive Search includes: Identical goods Related goods Identical or nearly identical marks with unrelated goods 22

23 Types of Trademark Searches Common Law uses of the mark may include: Internet web uses Business name directories Trade directory databases Domain names Telephone directories Newspapers, journals Case law 23

24 Trademark Searching Limitations inherent in Trademark Searches Database updates Synonyms Misspellings Connotations Foreign claim of priority Translations Subjectivity 24

25 Trademark Searching Test for Likelihood of Confusion includes: Strength of mark Similarity between the marks Similarity between the goods/services Actual confusion Purchaser sophistication Whether use of the mark was in good faith Likelihood of expansion of use of marks 25

26 Trademark Searching Famous marks and the Dilution Doctrine: Dilution only protects famous marks Such powerful consumer associations that even non-competing uses can impinge on its value 26

27 Trademark Searching Can the mark be registered? Is the mark Descriptive? APPLE for computers vs. Apple for fruit ANALOG DEVICES for devices with analog capabilities QUIK-PRINT for printing services GRAND HOTELS for hotel services 27

28 Trademark Searching Can the mark be registered? Is the mark Misdescriptive? Falsely indicates an ingredient, quality, or characteristic of the goods/services Not protectable May be subject to false advertising claims Titanium for vehicles that do not contain titanium Dura-Hyde for plastic shoes with a leather-like appearance Softhide for imitation leather material 28

29 Trademark Searching Can the mark be registered? Is the mark Generic? HAND WASH for hand wash Aspirin Escalator Heroin Thermos Videotape 29

30 Trademark Searching Can the mark be registered? Is the mark Primarily Merely a Surname? 30

31 Trademark Searching Can the mark be registered? Is there some other impediment to registration? Geographically Descriptive PARADISE ISLAND AIRLINES for airline services to Paradise Island CALIFORNIA PIZZA KITCHEN for restaurant services HERSHEY for chocolates 31

What Action is Available for Adverse Results Avoid claims of Trademark Infringement or Refusal to Register the Mark Abandon the preferred mark and adopt an alternative Determine

32 What Action is Available for Adverse Results Avoid claims of Trademark Infringement or Refusal to Register the Mark Abandon the preferred mark and adopt an alternative Determine if prior mark is vulnerable to cancellation Acquire the prior mark Obtain consent from the owner of the prior mark Obtain a license to use the mark for specific goods or services 32

33 Trademark Clearance Opinions George R. McGuire March 1, 2018

34 Best Practices Clearance Opinions Should opinion be oral or written? o Oral if requested by client; common reasons: If unfavorable opinion, does client want it disclosed orally instead of in writing No written record (and circumstances may change over time + may not anticipate all possible defenses at time of opinion) Regardless of opinion, in order to avoid costs associated with drafting the opinion 34

35 Written Opinions Skeleton Background Caveats Executive Summary List of Pertinent Marks and/or Landscape Analysis/Risk Assessment o Suggestions to avoid/minimize risks Conclusion 35

36 Background Context for the opinion -- include: o The candidate/proposed mark. o The client s plans for use of the candidate mark. o Whether the opinion addresses both use and registration or only use. o Any other background information the client has provided and on which counsel relied in assessing the significance of the search references. 36

37 Caveats Common caveats: o Potential omissions from the search report owing to the timing of database updates and searcher subjectivity o Assumptions about the completeness and reliability of the content of the source databases o Subjectivity of Trademark Analysis ( reasonable minds may differ ) o Conflicts based on meaning of marks; e.g., London Fog v Smog, Lollypop v jellibean, Cyclone v Tornado (no good way to search similar meanings) o Design/Trade Dress search tools not very good at searching design marks and trade dress 37

38 Executive Summary Typically 1-3 sentences o Indicate conclusion as to whether mark is available for use and/or registration o May restate any assumptions/caveats 38

39 List of Marks Pertinent/Problematic Marks o Typically list in table form with column headers: Mark Goods/Services Status Registered, Pending application (ITU v. Use), Common Law only Register/Common Law Source Federal, State, Common Law Owner 39

40 Landscape/General Interest If no pertinent marks uncovered o Identify as being landscape or of general interest only (minimize impact) o Briefly discuss how proposed mark differs In spelling/sight, sound, meaning In markets/market channels In goods/services 40

41 Analysis/Risk Assessment 41 Thorough legal analysis of search results o Useful to apply factors as a court/pto would apply Be open ended to permit additional reasons to be articulated later if new facts later come to light Explain significance of disclaimers, cancellation, abandonment, if applicable o Explain trade name and domain name issues that may differ from trademark analysis Other legal theories, if applicable o Dilution, right of publicity, etc.

42 Registerability In addition to right to use, may also advise on registerability of mark Factors PTO would consider o Compare with other marks on federal register (pending and/or registered) Inherently distinctive versus descriptive issues o Principal versus Supplemental Register 42

43 Suggestions Where potentially conflicting marks are uncovered, may want to suggest ways for client to lessen the relevance of such marks o Use logo/design elements o Combine with another mark to create more distinctive mark 43

44 Challenging Potentially Conflicting Marks

45 How to Challenge Argument o No LOC (or other argument to distinguish) Cancel registration o If favorable facts, seek to cancel problematic registration Seek Consent/Co-Existence o Alternative to Cancellation and/or if facts are suitable License/Acquire 45

46 Cancellation Petition for Cancellation of a Registration o 15 U.S.C Bases for Petition: o Earlier first use + LOC/Dilution Within five years from the date of the registration of the mark o Abandonment/Generic/Fraud At any time after registration 46

47 Consent Agreements Cancellation may be viable option, but could be expensive and take years to resolve Is it more practical to seek consent instead? o Contract in which owner of one mark consents to the use and/or registration of the same or similar mark by another party Must point out why the parties believe there is no confusion Detail how the parties will avoid confusion 47

48 Why No confusion? Differences in marks o If the marks are not identical but contain some differences, this can be pointed out Differences in market channels o If one party promotes its goods/services in a different market channel, this should be detailed Differences in markets/consumers o Similarly, if the parties serve distinct markets (e.g., professional versus consumer) Differences in geography o If there are differences in the geographic distribution of goods/services, this can serve as a basis 48

49 Avoid Confusion? Work together to avoid confusion Include other indicia of source o Other house mark? o Company name? Include disclaimers/advertising If alerted to actual instance of confusion, contact confused party to dispel confusion 49

50 License/Acquire If feasible, consider whether mark might be licensed and/or acquired If license: o Quality Control to be exercised by mark owner o All goodwill will vest with mark owner o Payment of royalties to mark owner If acquire: o Will acquire goodwill symbolized by mark Sometimes hard to value 50

51 Use of Opinion in Litigation Most typical use is as defense to charge of willfulness o Might also be used to show good faith in bringing suit To be useful, opinion must be: o Prepared by a competent attorney One with trademark specific experience and independence o Based on adequate investigation Generally a full search See, INTERNATIONAL STAR CLASS YACHT RACING ASSOCIATION, v. TOMMY HILFIGER, U.S.A., INC. (search of only federal records insufficient) o Completeness Thorough legal analysis 51

52 Waiver of Privilege Production of opinion will waive privilege o Not just for opinion, but also all related documents and communications associated with the opinion Search jurisdiction as to how far waiver applies to work product (varies circuit to circuit) 52

53 Lawyer as Witness Is testimony from lawyer rendering opinion relevant and admissible? o District courts have reached different conclusions as to relevance: State of mind of accused infringer is what is relevant Whether accused infringer withheld material from attorney might also be relevant Can attorney serve dual role as potential witness and litigation counsel? o ABA Model Rule 3.7 Lawyer shall not act as advocate at trial in which lawyer likely to be witness Does not necessarily bar others at lawyer s firm from handling litigation Should consult precedent in your jurisdiction as unsettled 53

AIPLA TRADEMARK BOOT CAMP June 10, 2011 Richard C. Gilmore. Analyzing Trademark Search Reports

AIPLA TRADEMARK BOOT CAMP June 10, 2011 Richard C. Gilmore Analyzing Trademark Search Reports I. Analyzing Trademark Search Reports The analysis of a trademark search report should establish whether a