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Key Principles of Trademark Law and Unfair Competition Practicing Law Institute San Francisco June 24, 2016
Vineeta Gajwani Senior Counsel,
Electronic Arts Inc.
Blackhorse, et, al. vs. Pro-Football, Inc, (T.T.A.B. June 18, 2014), In re: Tam, No. 2014-1203 (Fed Cir. 2015)
I. Introduction
Trademark Law
In combination with Copyright, Patent, Rights of Publicity, Trade Secret Rights
Basis for federal courts in commerce clause not Article I, Section 8, which is the basis of congressional grant of rights in copyrights and patents
What are Trademarks?
Trademarks are source identifiers
– Usually a word, symbol, or phrase, but it can also be a shape, design, color, smell, taste or even a sound.
Trademark owners have the exclusive right to use that word, device, symbol with certain goods and services.
Trademark rights are territorial – limited to a specific territory.
IF IT’S IN THE GAME, IT’S IN THE GAME
Do you think this product raises: A. copyright questions only?
B. trademark questions?
C. both?
II. Is a Trade Name a Trade Mark?
Trade Name signifies the goodwill in an enterprise as a whole.
–Corporate, business and professional organizations are called trade names
Infringement similar to trademark
The likelihood of confusion
Trade Names cannot be registered
Corporate name formation does not confer rights to Trade Mark
Wheaties, Inc. does not obtain rights to WHEATIES
E.I. de Nemours and
Company DuPont
International Business Machines, Corp.
III. Domain Names and Trademark Rights
Domain Name acquisition does not confer rights to a Trade Mark
Wheaties.com does not obtain rights to WHEATIES
The Internet
Does a Domain Name function as a Trademark?
Does using another’s mark in a Domain Name infringe on the Trademark?
IV. Definition of Trademarks and Service Marks
Those words, symbols, phrases or designs which the public associates with a single source of goods or services. Trademarks - single source of goods
Service marks - single source of services
Trade Dress
Federal Law Lanham Trademark Act of 1946
State Law The Model State Trademark Bill
What is the Mark in the following
slides?
Trademark Design Only
Design Type DESIGN WITH
WORD(S)/LETTER(S)/STYLIZED
Database U.S. Federal
Application Number 78258712
Registration Number 2904858
Status SECTION 8 & 15 ACCEPTED
(REGISTERED)
Trademark Design Only
Design Type DESIGN & WORD(S)/LETTER(S)
Database U.S. Federal
Application Number 75450053
Registration Number 2835657
Status SECTION 8 & 15 ACCEPTED
(REGISTERED)
Trademark Design Only
Design Type DESIGN ONLY
Database U.S. Federal
Application Number 74494466
Registration Number 2437751
Status RENEWED (REGISTERED)
Trademark Design Only
Design Type DESIGN ONLY
Database U.S. Federal
Application Number 74494463
Registration Number 2437750
Status RENEWED (REGISTERED)
This is a clan plaid. Is this a trademark?
A. Yes
B. No
Design Type DESIGN ONLY
Database U.S. Federal
Application Number 77209954
Registration Number 3529814
Status REGISTERED
Section 2(F)
V. What Constitutes “Use” of a Trademark?
Lanham Act “Use in Commerce” is “the bona fide use of mark in the ordinary
course of trade, and not made merely to reserve a right in a mark” Section 45. Exception is an intent to use filing. Section 44.
No Trade, No Trademark.
Use Place on the goods or their containers and,
Goods are sold or transported for sale.
Registration of a domain name is not “use.”
Is there a valid trademark?
A. Yes
B. No
If so, is it on both products?
A. Yes
B. No
Is there an infringement?
A. Yes
B. No
Is there a valid trademark?
A. Yes
B. No
If so, is it on both products?
A. Yes
B. No
Is there an infringement?
A. Yes
B. No
Makers Mark Distillery, Inc. v.
Diageo N. Am., 679 F.3d 410 (6th
Cir. Ky. 2012).
-Yes
Christian Laboutin S.A. v. Yves
Saint Laurent Am. Holding, Inc.,
696 F.3d 206 (2d Cir. N.Y. 2012).
-Yes and No
Trademark Selection
2 Goals:
1. Select a mark that is available and clear
2. Select a mark that is strong and protectable
3. Registrable
Selecting a Mark
Spectrum of Distinctiveness
Generic
– The mark is the word for the product or service itself (e.g. new brand of coffee called LATTE coffee.)
–Generic marks are unprotectable
Highly protectable
Not protectable
Generic Descriptive Suggestive Arbitrary Fanciful
Generic Trademark Examples
Aspirin
Escalator
Cellophane
Thermos
Videotape
Margarine
Trampoline
Spectrum of Distinctiveness
Descriptive
– The mark describes some quality of the goods/services such as its color, odor, function, dimensions, ingredients, etc. (e.g. ALL BRAN for cereal, HOLIDAY INN for hotels)
– Descriptive marks are weak and not registrable unless “acquired distinctiveness” or “secondary meaning”
Highly protectable
Not protectable
Generic Descriptive Suggestive Arbitrary Fanciful
Descriptive Trademark Examples
American Airlines
Quick-print
Holiday Inn
Kentucky Fried Chicken
Bank of America
Spectrum of Distinctiveness
Suggestive
– The mark suggests a characteristic about the goods/services, but doesn’t describe the product (e.g. GOBBLE GOBBLE for turkey meat, COPPER TONE for sun tan lotion)
– Suggestive marks are considered strong and are both protectable and registrable
Highly protectable
Not protectable
Generic Descriptive Suggestive Arbitrary Fanciful
Suggestive Trademark Examples
Opentable
Greyhound
Facetime
Grubhub
Snapchat
Waze
Spectrum of Distinctiveness
Arbitrary
– The mark is commonly known but not used for its meaning. (e.g. APPLE for computers)
–Arbitrary marks are very strong. Very high degree of protection.
Highly protectable
Not protectable
Generic Descriptive Suggestive Arbitrary Fanciful
Arbitrary Trademark Examples
Uber
Apple
Yahoo
Pandora
Nike
Tide
Spectrum of Distinctiveness
Fanciful
– The mark is a made-up word/words (e.g. EXXON for gas, KODAK for cameras, CLOROX for bleach)
– Fanciful marks are the strongest types of trademarks. Highest degree of protection.
Highly protectable
Not protectable
Generic Descriptive Suggestive Arbitrary Fanciful
Fanciful Trademark Examples
Reebok
Techron
Rolex
Spotify
Hulu
Examples BATTLECAM for computer game software
? Descriptive
Examples SURVIVOR for music band
? Arbitrary
Examples ELECTRIC CANDLE COMPANY for light bulbs
? Generic
Examples
for travel agency services, information about travel
? Generic
Examples
for cigarettes
? Arbitrary
Examples
for coffee
? Fanciful
Examples CAESAR! CAESAR! for salad dressings
? Descriptive
Examples
for telephones
? Fanciful
Genericide
Genericide: mark that was once fanciful has now become so common that it is generic – Examples: ASPIRIN, THERMOS,
CELLOPHANE, ESCALATOR
– Marks in danger of genericide: GOOGLE for internet search
(e.g. “google it” instead of “search it”)
XEROX for copying
KLEENEX for tissue
YO-YO, SPAM
To avoid genericide: use the mark as an adjective, not as a noun or a verb
AD CAMPAINS TO FIGHT GENERICIDE
Trademark Selection
Think broadly when choosing
What is “related”?
The New York Times
Is the mark registrable everywhere?
VII. Proper Use of a Mark
Distinguish Marks in Print
Use it consistently
Use with the Proper Generic Term
Use as a Proper Adjective
Use in Singular
Clarify Ownership of Mark
Use Proprietary Notices
Notices
“” means a mark federally registered in the U.S. Patent and Trademark Office.
“™” means a trademark, either registered or unregistered.
“SM” means a service mark, either registered or unregistered.
“© Copyright 1996 XYZ Co.” and “© 1996 XYZ Co.” are copyright notices, not trademark notices.
IX. Trademark Registration: United States
State Registration
CA Business and Professions Code Sections 14200 - 14418
Federal Registration
Lanham Act
Principal Register
Supplemental Register
Obtaining and Maintaining Federal Registration
X. Forms of U.S. Applications
Intent to use ( Section 1(b))
Use-based (Section 1(a))
Section 44
Section 66
Advantages of intent to use
Secure lots of products/services in lots of classes
Reserve rights in advance
Disadvantages of intent to use
Only products/services offered in commerce can be registered ultimately
Can waste lots of money filing in multiple classes
If desire to extend under Madrid Protocol, only products/services ultimately registered will be extended
Advantages of use-based applications
If discrete products – e.g. non-alcoholic beverages, very easy to file based on use
Cheaper, more certainty for Madrid extensions, Paris filings
Non-U.S. based clients may already have broad registrations in multiple classes that are desirable for defensive and offensive purposes
U.S. TRADEMARK APPLICATION CYCLE Applications filed based on USE
Description Time Period Explanation
Application filed Application filing date
Substantive
Examination
~ 6 months from
filing date
PTO examines the
application for registrability
and either 1) approves the
mark or 2) issues a
procedural or substantive
objection
Response to
Office Action
6 months from
Office Action date
A response to any objection
by the PTO must be filed
within six months from the
date of the objection
U.S. TRADEMARK APPLICATION CYCLE Applications filed based on USE continued…
Description Time Period Explanation Publication ~ 3 months from
approval of
application
Once the PTO approves the
application, it is published in the
Official Gazette of Trademarks
Opposition
Period
30 day from
publication date
Third parties have one month to file an
objection, or request to extend the time
to file an objection (up to 120 days
from the publication date)
Registration
Issues
~ 3 months from
expiration of
opposition period
The registration will issue
approximately three months from the
end of the third party opposition period
Total Time ~ 1-1 ½ years
U.S. TRADEMARK APPLICATION CYCLE Applications filed based on INTENT TO USE
Description Time Period Explanation Application filed Application filing date
Substantive
Examination
~ 6 months from
filing date
PTO examines the application
for registrability and either 1)
approves the mark or 2) issues
a procedural or substantive
objection
Response to
Office Action
6 months from
Office Action date
A response to any objection
by the PTO must be filed
within six months from the
date of the objection
U.S. TRADEMARK APPLICATION CYCLE Applications filed based on INTENT TO USE continued…
Description Time Period Explanation Publication ~ 3 months from
approval of
application
Once the PTO approves the application, it
is published in the Official Gazette of
Trademarks
Opposition
Period
30 day from
publication date
Third parties have one month to file an
objection, or request to extend the time to
file an objection (up to 120 days from the
publication date)
Notice of
Allowance
~ 3 months from
Expiration of
opposition period
This commences a 3-year period within
which the mark must be used and a
Statement of Use must be filed. It is
necessary to file an Extension Request
every six months to keep the application
pending until use is established.
U.S. TRADEMARK APPLICATION CYCLE Applications filed based on INTENT TO USE continued…
Description Time Period Explanation
Statement of Use Filed within 3-years
from the date of the
Notice of Allowance
Registration Issues ~ 3 months from
Acceptance of use
statement
The registration will
issue approximately
three months from
acceptance of the
Statement of Use
Total Time to Approval ~ 1-1 ½ years
Total Time Available to Prove Use ~ 4 years
XI. Special Problems – Identification of Products and Services
Review the USPTO Identification of Goods and Services Manual Regularly
Ongoing changes to classifications according to international meeting on the Nice Classification
e.g. – video games used to be in Class 28, now Class 9
Specificity required to numbing degree
XI. Special Problems – Identification of Products and Services- continued
Rule of thumb: description needs to identify sufficiently what the product or service is for, and then will be classified in that Class: e.g.
• educational books – Class 16
• downloadable books [indicate subject matter] - Class 9 (class follows form . . . )
XI. Special Problems – Identification of Products and Services- continued
Technical subject matter always vexing:
Example:
“Measuring apparatus and instruments” in Class 9 need to specify particular types of instruments, not just the intended use
“pharmaceutical preparations” need to add intended use, (e.g. cancer treatment) but not what they are
XII. SPECIAL PROBLEMS – SPECIMENS - WEBPAGES
TMEP § 904.04
Note that webpage specimens MUST have these elements:
• Picture or textual description of the identified goods
• Prominent appearance of mark in sufficient proximity to the goods to associate the mark with the goods
• Ordering information to buy the goods on the same webpage
XIII. Trademark Registration: Foreign
Territorial Rights
CTM (“Community Trademark”) Filing Procedure
28 Member countries as of June 2014: Austria, Belgium, Bulgaria, Cyprus, Croatia, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, United Kingdom
NOT Norway, Switzerland, Iceland and Liechtenstein
XIII. Map of the European Union
XIII. Trademark Registration: Foreign, cont.
Madrid Protocol – Effective November 2003 allows “one stop” filing internationally Member countries (95 as of 2015):
Albania, Algeria, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia and Herzegovina, Botswana, Bulgaria, Cambodia, China, Colombia, Croatia, Cuba, Cyprus, Czech Republic, Democratic People’s Republic of Korea, Denmark, Egypt, Estonia, European Union, Finland, France, Georgia, Germany, Ghana, Greece,, Hungary, Iceland, India, Iran, Ireland, Israel, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Madagascar, Mexico, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, New Zealand, Norway, Oman, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova,
Continued …
XIII. Trademark Registration: Foreign, cont.
Madrid Protocol – Effective November 2003 allows “one stop” filing internationally Member countries (95 as of 2015):
Continued …
Romania, Russian Federation, Rwanda, San Marino, Sao Tome and Principe, Serbia, Sierra Leone, Singapore, Slovakia, Slovenia, Spain, Sudan, Swaziland, Sweden, Switzerland, Syrian Arab Republic, Tajikistan, The Former Yugoslav Republic of Macedonia, Tunisia, Turkey, Turkmenistan, Ukraine, United Kingdom, United States, Uzbekistan, Vietnam, Zambia, Zimbabwe
XIV. Trademark Policing
Defensive Maintaining proper use
Offensive Vigilant assertion of the owner’s rights
Watch service(s)
In-house “watching”
Educate the Client Advise counsel of similar or confusingly similar marks in the
marketplace.
Find out about the infringer
XV. Enforcement
A. Civil Litigation- Lanham Act
Registered Trademarks
Section 32 and Companion State Statutes
Unregistered Trademarks
Section 43(a) protects against “false designation of origin”
(a)(1) Any person who…Section (a)(1)
(A) is likely to cause confusion…Section(a)(1)(A)
(B) in commercial advertising, or promotion…Section(a)(1)(B)
Anti-Counterfeiting Cyber Squatting
State Court Litigation
B. Trademark Trial and Appeal Board
XV. Enforcement (cont.):
C. UDRP Domain Name Disputes
UDRP is a uniform system of rules set by ICANN to stop registration of a domain name by a third party. Only the domain name ownership is in dispute
Based on contractual agreement to submit to the rules when domain name registered
Several dispute resolution bodies exist, e.g. WIPO, National Arbitration Forum. See www.wipo.org
D. Notice and Takedown Procedure
E. Customs Recordation
F. ITC Action
Conclusion
The life of a trademark can be forever, if proper care is taken in trademark selection, protection, and enforcement. Increasingly, trademark rights supplant or complement patent and copyright rights to create protectable interests in various aspects of how companies do business – their names, logos as well as trade dress aspects of their business.
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