Trademark Enforcement: Analyzing Claims, Crafting Cease and Desist Letters, Monitoring Marks, and More

Transcription

1 Presenting a live 90-minute webinar with interactive Q&A Trademark Enforcement: Analyzing Claims, Crafting Cease and Desist Letters, Monitoring Marks, and More TUESDAY, APRIL 24, pm Eastern 12pm Central 11am Mountain 10am Pacific Today s faculty features: Stephen R. Baird, Shareholder, Winthrop & Weinstine, Washington, D.C. Leah Chan Grinvald, Assistant Professor of Law, Saint Louis University School of Law, St. Louis Michael R. Chiappetta, Counsel, Fross Zelnick Lehrman & Zissu, P.C., New York 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. 10.

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5 2012 Leah Chan Grinvald

6 Foundations of an Intelligent Trademark Enforcement Strategy Is there a legal obligation to enforce your trademark? Consequences of lax enforcement Consequences of over-enforcement SLU LAW Leah Chan Grinvald/ Assistant Professor of Law 6

7 Legal Obligation to Enforce? U.S. PTO s Aggressive Trademark Litigation Tactics Report to Congress Trademark owners have a legal right and an affirmative obligation to protect their trademark assets from misuse. 1. AIPLA The obligation of trademark owners to police the relevant market for infringers is well established. 2. INTA trademark law imposes an obligation on trademark owners to enforce their rights: otherwise those rights may be lost. 3. IPO It is in the best interest of companies, large and small, to carefully review potential trademark infringement issues and create a consistent enforcement strategy which, in turn, bolsters brand recognition and reliance. SLU LAW Leah Chan Grinvald/ Assistant Professor of Law 7

8 Legal Obligation to Enforce? Legal citations? 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition 11:91 (4 th ed. 2012) ( The law imposes on trademark owners the duty to be pro-active and to police the relevant market for infringers. ). Morningside Group Ltd. v. Morningside Capital Group, LLC, 182 F.3d 133, 139 (2d Cir. 1999) ( [T]he successful policing of a mark adds to its strength to the extent that it prevents weakening of the mark s distinctiveness in the relevant market. ). SLU LAW Leah Chan Grinvald/ Assistant Professor of Law 8

9 Consequences of Lax Enforcement Differing levels of severity 1. Reduction in trademark strength -Distinctiveness -Fame Amstar Corp. v. Domino s Pizza, Inc., 615 F.2d 252 (5 th Cir. 1980) 2. Laches/Acquiescence TMT North America, Inc. v. Magic Touch GmBH, 124 F.3d 876 (7 th Cir. 1997) 3. Abandonment/Genericide BellSouth Corp. v. DataNational Corp., 60 F.3d 1565 (Fed. Cir. 1995) Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc., 198 F.3d 1143 (9 th Cir. 1999) SLU LAW Leah Chan Grinvald/ Assistant Professor of Law 9

10 Consequences of Over Enforcement 1. Bully Moniker -Public shaming / bad publicity 2. Attorneys Fees Theodore H. Davis, Jr., Recovery of Attorneys Fees in Trademark and Unfair Competition Litigation, 2 No. 5 Landslide 3. Sanctions 18 (May/June 2010) -Rules 11 and 37(a) -28 U.S.C SLU LAW Leah Chan Grinvald/ Assistant Professor of Law 10

11 Leah Chan Grinvald Assistant Professor of Law St. Louis, MO SLU LAW OFFICE OF COMMUNICATIONS

12 BEFORE sending a demand letter Establish priority over recipient. Establish priority in the relevant field. Establish merit of demand. 12 Fross Zelnick Lehrman & Zissu, P.C.

13 Assess Mark Strength / Scope of Client s Rights Conceptual strength (inherent distinctiveness). Commercial strength (marketplace distinctiveness). The strength of the mark is determined by two factors: "(1) the degree to which it is inherently distinctive [also referred to as Conceptual Strength]; and (2) the degree to which it is distinctive in the marketplace [also referred to as Commercial Strength]." McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1130 (2d Cir.1979) There are three basic measures of the strength of a trademark: the inherent nature of the mark itself, the effect of use and advertising on customer perception, and the existence of competing uses of other, similar marks. Visa Intern. Service Ass n. v. Eastern Financial Federal Credit Union, 967 F.2d 596 (9 th Cir. 1992). 13 Fross Zelnick Lehrman & Zissu, P.C.

14 Pitfalls of Haphazard Enforcement Acting without the big picture. Informal searches may not show the true commercial strength. Informal searches may not reveal a third party with prior rights. Potential wasteful enforcement. Enhanced risk of negative publicity. 14 Fross Zelnick Lehrman & Zissu, P.C.

15 Where to draw the line? Likelihood of confusion dictates outer limits. Think realistically. It is entirely reasonable for the [trademark owner] to object to the use of certain marks in use on some goods which it believes would conflict with the use of its marks while not objecting to use of a similar mark on other goods which it does not believe would conflict with its own use. McDonald s Corp. v. McKinley, 13 U.S.P.Q (T.T.A.B. 1989) Prior users dictate outer limits. Prominent brands / extended co-existence. 15 Fross Zelnick Lehrman & Zissu, P.C.

16 Similarity of Goods A crowded field may dictate where you draw the likelihood of confusion line. Client Mark / Goods Mark Similarity 16

17 Drawing the line short of a prominent or longterm user. Similarity of Goods Client Mark / Goods Mark Similarity 17

18 Formulating An Enforcement Strategy Any uncertainty as to priority INVESTIGATE! What are your client s objectives / resources? Law acknowledges the limited resources of trademark owner. Trademark owners are not required to constantly monitor every nook and cranny of the entire nation and to fire both barrels of [its] shotgun instantly upon spotting a possible infringer. Lawyers and lawsuits come high and a financial decision must be made in every case as whether the gain of prosecution is worth the candle. Cullman Ventures, Inc. v. Columbian Art Works, Inc., 717 F. Supp. 96, 127 (S.D.N.Y. 1989). 18 Fross Zelnick Lehrman & Zissu, P.C.

19 Formulating An Enforcement Strategy (cont.) Major problems and new users are a priority. Only actual users are problematic. Look out for laches! Formulate objection guidelines. 19 Fross Zelnick Lehrman & Zissu, P.C.

20 Preparing the Demand Letter Know the recipient. Write to counsel if possible. Determine tone of letter. Determine substance of demand. Know what your client will do in the event of noncompliance (empty threats, acquiescence). Safeguards against declaratory judgment. Reservation of rights. Fross Zelnick Lehrman & Zissu, P.C. 20

21 Michael R. Chiappetta Fross Zelnick Lehrman & Zissu, P.C.

22 22 Strategic Framework for Responding to Trademark Cease & Desist Letters Stephen R. Baird Chair, Intellectual Property and Trademark Brand Management Winthrop & Weinstine, P.A. (612)

23 23 Trademark Cease & Desist Letters What to Consider When Faced With a Trademark Demand Letter: Your Role: Non-lawyer, In-house Counsel, Outside Counsel? Client s Goals and Objectives are Paramount; Scrutinize the Claims & Demands Being Made; Size Up the Adversary, Their Counsel & Likely Goals Identify Various Options & Recommend Course of Action The Mechanics & How to Execute the Client Approved Strategy

24 24 Trademark Cease & Desist Letters After the Trademark Demand Letter Hits Your Desk: Understand Your Role Who Needs to Be Involved Sign-Off Protocol Next Steps

25 25 Trademark Cease & Desist Letters Determine Client s Goals & Objectives: Risk Tolerance Importance of the Dispute Business Relationships Registration and Use Timing Considerations Best Case Scenario Worst Case Scenario

26 26 Trademark Cease & Desist Letters Scrutinize Claims & Demands Probe Infirmities in Elements of Prima Facie Cases: Priority Nature of Claimed Exclusive Rights Likelihood of Confusion Allegations of Fame/Dilution Bad Faith Registration/Use Possible Defenses Probe Factual Weaknesses Additional Information Needed?

27 27 Trademark Cease & Desist Letters Size Up the Adversary, Their Counsel & Likely Goals Focus on Trademark Owner Focus on Opposing Counsel Evaluate Track Records Reading the Tea Leaves

28 28 Trademark Cease & Desist Letters Identify Various Options & Recommended Course of Action The Search for Leverage Explore the Possible Exit Ramps Is Silence a Viable Option? Degrees of Response Possible Oral or Written Response? Declaratory Judgment Action? Insurance Coverage for Claims?

29 29 Trademark Cease & Desist Letters The Mechanics & Executing the Approved Strategy Tone Critical as Content Shed the Emotion Consider Human Psychology Curious & Questioning Details of Written Response Discuss Redacted Example

30 30 Trademark Cease & Desist Letters Recent Concrete Examples:

31 31 Trademark Cease & Desist Letters Recognizing Your Personal Goals Do They Mirror Client Goals? Long Term v. Short Term View Vindication of Your Clearance? Professional Reputation Professional Responsibility

32 32 Thank you! Stephen R. Baird Chair, Intellectual Property and Trademark Brand Management Winthrop & Weinstine, P.A. (612)