Trademark Registrations:

Transcription

1 : The All-In One Cheap Solution, Including Free Police Forces OCTOBER 2017 nixonvan.com

2 Trademarks Basics US TM Applications US TM Registrations Policing - You, USPTO, Customs, Others 2

3 What can be a trademark? Words - PEPSI, IPHONE, EXXON Slogans - JUST DO IT, WHAT S IN YOUR WALLET? Designs Combination of words and designs Sounds - NBC chimes, MGM Roaring Lion Color pink, robbin s egg blue Scents - lavender, vanilla Product configurations - guitar bridge, shoe, bottle 3

4 Where are trademarks found? Trademarks for goods usually appear on the goods themselves, on packaging or labels for the goods, and/or point of purchase displays for the goods (online sales) Trademarks for services usually appear on advertising and promotional brochures for services or on other materials used to advertise or offer the services (websites, social media) 4

5 Strength of Trademarks Coined - XEROX Fanciful /Arbitrary - APPLE for computers Suggestive - COPPERTONE for tanning lotion Descriptive (including surnames) - FOOD FAIR for a supermarket Generic SODA, CELLOPHANE, ESCALATOR Terms that are coined, fanciful/arbitrary, or suggestive are considered distinctive enough to function as trademarks. If a term is descriptive, the term may function as a trademark if it can or has obtained secondary meaning. Generic terms cannot function as a trademark. 5

6 How do you obtain US tm rights? Use of the trademark Bona fide intention to use the trademark along with filing US tm application at USPTO US Registration is not required in order for a trademark to be protected, but it is highly recommended. Relatively cheap and numerous benefits offensive and defensive. 6

7 Benefits of Registration on Principal Register Filing date is constructive first use date nationwide Legal presumption of registrant s ownership of the mark and registrant s exclusive right to use the mark nationwide on or in connection with the goods/services in the registration Public notice of registrant s claim of ownership of the mark Listing in the USPTO s databases Right to use symbol Jurisdiction of federal courts may be invoked Registration can be used as a basis for obtaining registration in foreign countries Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods 7

8 Benefits of the Supplemental Register Public notice of registrant s claim of ownership of the mark Listing in the USPTO s databases Right to use symbol Jurisdiction of federal courts may be invoked Right to sue for infringement in federal court and have federal law control key issues of validity, ownership, infringement, injunctions, and damages But does not entitle you to some of the evidentiary presumptions available to registrations on the Principal Register; or to register with Customs 8

9 US Trademark Applications

10 US TM Applications 4 Filing Bases US application based on actual tm use in US US application based on intent to use tm in US US application based on foreign tm app or reg US application based on International Registration of tm (extension from IR) -- not for arguably suggestive or descriptive trademarks, or if identification of goods/services questions 10

11 US TM Applications - Examination First Office Action 3 months Response 6 months Second Office Action 1 month Response 6 months Final Office Action 1 month Response 6 months 11

12 US TM Applications Exam closed Publication for third party opposition purposes 30 days Third party opposes or extends Extend for 90 days with good cause Further extend for 60 days with consent 12

13 US TM Applications No Opps US Registration issues - 3 possible bases: Actual use of trademark in US commerce Foreign Registration of trademark International Registration of trademark US Notice of Allowance Issues for intent to use based application Convert intent to use to actual use File Declaration of Use 6 months (x5) US Registration issues 13

14 US Maintain, Renew

15 US TM Registrations Maintain, etc. 5 6 year anniversary (extend 6 months) Section 8 Declaration of Current TM Use Section 71 Declaration of Current TM Use Optional Section 15 Declaration of 5 years of Continuous TM Use makes the US registration incontestable 15

16 US TM Registrations Renew, etc year anniversary (extend 6 months) Section 8 Declaration of Current Use and Section 9 Renewal App Section 71 Declaration of Current Use Optional Section 15 Declaration of 5 years of Continuous Use 16

17 US TM Registrations Renew etc. All Section 8 / 71 Declarations of Current Use Require: Amend ID to delete goods/services No current TM use Specimen of current TM use for each class Examination Acceptances or Office Actions 1 to 3 months Responses 6 months Random USPTO checks request more info 17

18 US TM Registrations - Specimens Goods Product labels or packaging Product Data Sheets that travel with the goods Product display materials (Trade Show) Product use / instruction manuals Website pages showing goods offered for sale 18

19 US TM Registrations - Specimens Services Website pages showing services provided Brochures showing services provided Trade Show materials showing services provided Signage at locations where services are provided (examples: retail store, restaurant) 19

20 US Trademark Oppositions

21 US TM Application Examination phase Opposition phase Registration 21

22 Pleading Notice of Opposition = Complaint Identify parties Identify alleged rights Identify reason for refusing registration eg, likelihood of consumer confusion 22

23 Pleading Notice of Opposition (cont.) Pay USPTO fee ($400 per class) File at Trademark Trial and Appeal Board (TTAB) at the USPTO TTAB serves on applicant 23

24 Institution of Proceeding TTAB reviews the Notice of Opposition TTAB institutes the proceeding TTAB issues Scheduling Order 24

25 TTAB Scheduling Order Answer / Affirmative Defenses (& Counterclaims) 40 days Discovery Conference (& Settlement) 1 month Discovery phase 6 months 25

26 TTAB Scheduling Order (cont.) Trial phase Trial testimony & entry of evidence (via depositions) Notice of Reliance 26

27 TTAB Scheduling Order (cont.) Briefing phase Oral argument Three member panel 30 minutes each side 27

28 Trivia > 95% of cases settle TTAB cannot award any $ (TTAB determines right to register tm) Appeal to CAFC or file civil action 2 months from TTAB decision 28

29 More Trivia 37 CFR = opposition proceedings 37 CFR = except as otherwise provided, Fed.R.Civ.P. govern opposition proceedings 29

30 US Trademark Litigation

31 US TM Litigation Lawsuit location US District Court Trademark law in the US is based on both national and state laws US District Courts can decide cases based on both national and state laws State Court (seldom used for trademark cases) 31

32 US TM Litigation - Basics Expensive - $100,000 to $1,000,000 +/- 90% settled Duration typically 1 to 2 years to get to trial Relief: Injunction Money Damages (lost sales, price erosion, harm to trademark value, etc.) Infringer s profits (seldom exceptional case) Attorney s fees (seldom exceptional case) 32

33 US TM Litigation - Phases Pleadings Complaint Answer Discovery Fact Expert Motions Summary Judgment; Trial Limitations Trial 33

34 Policing offense Free Other companies searches of USPTO database reveal your pending US application or US registration which dissuades those other companies from using or trying to register similar trademarks Free - USPTO examines other companies US trademark applications and rejects them based on your earlier filed US application or US registration Cease and desist letters Oppose other companies US applications Cancel other companies US registrations Litigate Customs Others - Amazon 34

35 OPEN DISCUSSION

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