Managing A Global Trademark Portfolio

Transcription

1 Managing A Global Trademark Portfolio M a r k J a e g e r S r. V P HR, G e n e r a l C o u n s e l & S e c r e t a r y J o c k e y I n t e r n a t i o n a l, I n c. A p r i l 1,

2 Jockey s Rich Heritage of Innovation Invented the men s brief Invented the Y-FRONT Launched a women s line in 1982 Introduced SEAMFREE Men's and Women's Launched: REALFIT Bra STAYCOOL SKIMMIES Slipshort STAYNEW Technology

3 TM Portfolio At a Glance Trademarks Wordmark Logo/Design Unregistered/Pending

4 Today s Topics Intellectual Property (IP) Overview Acquiring Trademarks Enforcing Trademarks Monetizing Trademarks

5 Forms of IP Protection Trademarks Wordmarks Logos Patents Design Utility Copyrights Trade Secrets Trade Dress/ Design Marks Licensing/Vendor Exclusivity

6 Intellectual Property (IP) Form of IP Definition Criteria Example Trademark Patent Trade Dress Copyright Word, name, symbol or logo used in connection with a company s product or service for sourceidentifying purposes. Design: ( Appearance ): protects any new, original, ornamental design of a garment/product. Utility: ( Functional ): protects the function or operation of a garment or product. Protects total image/ look & feel of product s appearance, can include shape, configuration, texture, size, color & packaging etc. Protects original creative work fixed in a tangible medium, can include fabric prints, packaging, and websites Not generic Not descriptive Not similar to prior TMs Design: Novel, nonobvious, ornamental, useful Utility: Novel, nonobvious/not anticipated, useful Has secondary meaning; Ornamental; and Not functional Not an idea or useful article

7 Lanham Trademark Act of USC 1051 Named for Representative Fritz G. Lanham of Texas, the Act was passed on July 5, 1946, and signed into law by President Harry Truman What is a Trademark? A word, phrase, symbol or design, color, sound or smell that identifies and distinguishes the source of one party s goods/services from others. Consumer perception: who made or sponsored this product? In the US, trademark rights are contingent on continued use in commerce Trade names may be trademarks

8 Traditional Trademarks Word mark Trademarks Logo Combination

9 Non-traditional Trademarks Product Packaging Product Design Trademarks Color Characters Sounds

10 Strength of Mark/Scope of Protection Less Protection More Protection Generic Denotes general class of products Descriptive Describes some characteristic/quality Suggestive Suggests some characteristic Arbitrary Bears no relation to product Not a TM Aspirin, Thermos, Escalator, Trampoline, White bread Protectable if secondary meaning Automatically Protectable Automatically Protectable

11 How do I get a trademark? In the US: use (TM/SM) or register the trademark Almost everywhere else: register the trademark Why register in the U.S.? Additional advantages: Sue for infringement in federal courts w/o showing more Presumption of ownership, TM validity and use Profits, damages, costs, attorney fees Incontestable after five years Use the symbol Mark is placed on Federal Register (provides notice and may freeze competitor) Register with U.S. Customs

12 Can TM be Used? (Trademark Clearance) Conduct a preliminary knock-out search Cursory scan of federal TM database + cursory scan of common law references (Google search) Goal = Kill unavailable marks early in process Is that enough? Depends Lacks review of non-identical marks/goods, state registrations and adequate common law references If mark clears prelim search, order a full commercial search ($2-3K) Very comprehensive Review similar registered marks, common law uses, disclaimers, TTAB history; cursory and formal investigations

13 Obtaining a Trademark Registration Clearance Application and prosecution Use-based or intent to use ($325 per class) Descriptiveness rejections 2(d) Likelihood of Confusion (prior hits) rejections Publication (opposition) Issuance Maintenance (cancellation) Declaration of use between years 5 and 6 Incontestability Renewal every 10 years

14 Proper Use of TMs 1. TMs are adjectives used to describe generic product names and should be followed by a noun (generic product name, collection, brand) 2. Use proper symbols -- or 3. Do not Pluralize TMs; pluralize the product name 4. TMs should not be used in possessive form 5. Emphasize TMs apart from other creative copy 6. TM Credit Line, where appropriate

15 Enforcing Trademarks Use it or lose it Use TM correctly Maintain marks Actively monitor and take action on infringing marks

16 Enforcing Trademarks How far to extend your fence Can you show use in the full range of products within your class and outside of your class? Is the infringing use in the same or similar product/class How crowded is the register? Is your trademark incontestable? Is your TM famous? Famous marks have a broader scope of protection Famous marks entitle holder to make a dilution claim against noncompeting unrelated uses

17 Trademark Causes of Action Infringement using a trademark in a manner likely to confuse consumers. Examples: Suggestion of sponsorship or affiliation Passing off selling under another s trademark Counterfeiting using a false trademark Cybersquatting using another s trademark in a domain name Dilution/Passing off (applies to famous marks) Blurring Tarnishment

18 Monetizing Trademarks Develop a branding strategy One mark or many? Can you sustain a wide range of marks? Are they needed and relevant to your product/branding strategy Anticipate related product categories when filing an application

19 Monetizing Trademarks Build brand recognition through your trademarks to strengthen the marks over time Use trade dress along with your marks to develop unique identifiers that can increase your leverage against infringers Consider foreign registrations

20 Monetizing Trademarks - Licensing Global businesses can be based on trademark licenses Typical royalties range from 5-10% of net sales Licensee agrees to actively market products using the TMs Builds international brand recognition and trademark strength for licensor and licensee Key business terms include length of license, renewal options, royalty rates, guaranteed royalties, territories and licensor enforcement of mark in territories

21 The End

22 QUESTIONS?