INTELLECTUAL PROPERTY Trademarks Presented by Jill Anderfuren and Bryan Sugar Jill.Anderfuren@lewisbrisbois.com Bryan.Sugar@lewisbrisbois.com
Trademark Law A trademark constitutes any word, symbol, sound or device which is used with a good or service to identify a particular source. >> e.g. Logos, and slogans...even designs such as the shape of the Coca Cola bottle or the design and look of a McDonalds restaurant can serve as trademarks. Rights are created through use. Federal registration is not required but offers substantial advantages. Nationwide rights and presumption of validity strengthen rights. Trademarks have the potential to last forever provided they are used continuously. 3
Trademarks I m Lovin It Finger Lickin Good Inspire the Next 4
Establishing Trademark Rights Under U.S. Law Trademark priority rights are established by: 1. Using the trademark in commerce 2. Filing an intent-to-use application for the trademark Under the laws of most other countries trademark rights are established by: 1. Filing an application for the mark
Trademark Protection Selection Use Registration Protection
What Is A Trademark? What Is A Service Mark? A trademark is any word, name, symbol, or device, or any combination thereof which is used to identify and distinguish goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. A service mark is any word, name, symbol, or device, or any combination thereof, which is used to to identify..... the services of one person, including a unique service, from the services of others and to indicate the source of the services. Section 45 of the Lanham Act
Use In Commerce Trademark: Goods sold or transported in commerce which companies can regulate Service Mark: Services provided in commerce which companies can regulate Section 45 ( use in commerce ) 15 USC 1127 10
Method Of Use Technical Use Trademark used on the goods containers labels displays (websites from which goods can be purchased) Service Mark used on advertising of the services websites brochures sell sheets mentioning the service Section 45 ( use in commerce ) 15 USC 1127. TMEP 905 11
Traditional Rules Of Priority First to use wins. A single bona fide commercial transaction may suffice Use need not be extensive Use need not result in: - deep market penetration - widespread recognition Allard Enterprises v. Advanced Programming Resources, 146 F.3d 350, 56 USPQ2d 1865, 1868 (6th Cir. 1998) 13
Trademark Functions Source Identification Particular Company Particular Product or Service Quality Marketing, Advertising, Licensing and Brand Symbol
Limitations on Trademark Rights Rights and registration benefits are territorial State Country International Conventions
Select a Strong Trademark Trademark Strength Factors Distinctive Exclusivity Proper and Prominent Use
Categories of Trademarks and Degrees of Strength Fanciful or Coined Xyrxa Arbitrary Wonder Suggestive Holsum Bread Suggestive - Descriptive [Laudatory Terms, Surnames, Geographic] Super Bread Generic Bread Whole Grain Bread Generic words are available for all to use. It is the common word for the goods.
Unprotectable/Unregistrable Matter Generic Deceptive/Misdescriptive Scandalous or Disparaging National Emblems (Flags, coats-of-arms) Surname Protected Names (Olympic)
Trademark Selection Prior to Use or Filing 1. Choose a mark Strong enough to accomplish your goals. 2. Conduct a Search for the Trademark 1. Federal Register 2. State Register 3. Common Law Sources 4. Foreign Searches 3. Consider Your Options 1. Clear Availability 2. Mid-Level Risk 3. Direct Hits 4. Domain Name Use?
Establishing Rights In A Trademark United States Use the mark in commerce On the Goods or in connection with the Services in the ordinary course of trade (tags, labels, product displays*) In Connection with Services in Advertising materials, websites Promote Mark Identification Rights limited to geographical territory of usage
Actual and Constructive Use Prior actual use beats subsequent ITU Prior ITU filing date beats subsequent actual use Section 7(c), 15 USC 1057(c) 14
Register Your Trademark Apply for a federal registration on the basis that you have a bona fide intention to use the mark Benefits Constructive Date of First Use Constructive Notice Presumption of National Ownership and Validity Ability to Obtain Incontestable Status (5years) Create basis for Foreign Registrations (6 month priority) Licensing Requirements
How can rights in a mark be lost? Infringement Abandonment or Nonuse Express or Presumed Lack of Policing Naked Licensing Trademark Misuse Genericide (Elevator, Zipper, Aspirin)
Trademark Infringement Reproduction, counterfeit, copy or colorable imitation of a mark which is likely to cause confusion, mistake or deception. The standard of likelihood of confusion is determined by assessing the perception of the relevant public. 16
Rules for Proper Use Use Trademark Notices indicates that the owner considers this to be a trademark or indicates that the mark is registered These symbols are recognized in the U.S. The most important rule is that the marking or notice should be accurate and not misleading A U.S. based website may be viewed internationally, however it is not misleading to indicate if the mark is registered in the U.S.
Do Not Pluralize or Singularize Trademarks Pluralize the common nouns the mark describes. Correct: Two COKE soft drinks Incorrect: Two COKES Trademarks that end in "s" may be used with singular or plural nouns. Do not remove the "s" to singularize these marks. Correct: A BAGGIES plastic bag Incorrect: A Baggie
Trademarks are not Possessive Trademarks should never be used in the possessive form, unless the trademark itself is possessive such as LEVI'S jeans, MCDONALD'S restaurants or JOHNSON'S baby shampoo. NOT: CVS s pharmacy OK: CVS pharmacy