TRADEMARKS by Shanna K. Sanders, Esq. Heslin Rothenberg

TRADEMARKS

by

Shanna K. Sanders, Esq. Heslin Rothenberg Farley & Mesiti P.C.

Albany, New York

11/12/2014

1

Shanna K. Sanders, Esq.

TRADEMARKS

R TM

SM

November 21, 2014

Trademarks

A trademark is a word, symbol, or phrase, used to

identify a particular manufacturer or seller's

products and distinguish them from the products of

another. 15 U.S.C.�§1127.

Serve two primary purposes:

Protect consumers from being misled; and

Protect the goodwill of the entity that owns the mark.

©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved

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What is the Purpose of Trademark Law?

The U.S. Supreme Court said it best. The basic objectives of trademark law are as follows:

"[T]rademark law, by preventing others from copying a source-identifying mark, 'reduce[s] the customer's cost‘s of shopping and making purchasing decisions,' for it quickly and easily assures a potential customer that the this item - - the item with this mark -- is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it(and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product." Qualitex Co. v. Jacobson Products Co, 514 U.S. 159 (1995).


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Types of Marks

Trademark vs. Service Mark

Word

Slogan

Logo

Sound

Color


Slogan Marks

A slogan or any other combination of words is

capable of trademark significance, if used in such a

way as to identify and distinguish the seller’s goods

and services from others. Allstate Ins. Co. v. Allstate

Inc., 307 F.Supp. 1161 (N.D.Tex. 1969).


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Examples of Slogan Marks

New York State Division

of the Lottery

U.S. Reg. 3,751,899

All you need is a

dollar and a

dream

McDonald’s Corp.

U.S. Reg. 2,978,887

I’m

lovin’ it

So easy a

caveman can do it

Melts in your

mouth, not in

your hand

Mars, Inc. U. S. Reg. 1,596,711

Just do it

Nike, Inc.

U.S. Reg. 1,875,307

GEICO

U.S. Reg. 3,193,689


Sound Marks3

A sound mark identifies and distinguishes a product or service through audio rather than visual means. TMEP §1202.15.

Sounds are protectable when they are arbitrary, unique or distinctive and create in the hearer’s mind an association of the sound with a good or service. In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009); In re Gen. Electric Broad. Co., 199 USPQ 560, 563 (TTAB 1978).

The fact that sounds and musical compositions are protected by the copyright laws is not incompatible with their also qualifying for protection as trademarks. Oliveira v. Frito-Lay, Inc., 251 F.3d 56, 61 (2d Cir. 2001).

As with any designation alleged to be a mark, a sound cannot qualify as a mark if it is “functional.”


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Oliveira v. Frito-Lay, Inc. (2d Cir. 2001)

Recording artist, Astrud Gilberto, brought action

against potato chip seller, Frito Lay, claiming that

Frito Lay’s use of recording of artist singing her

“signature song” in a television commercial infringed

artist’s trademark rights.


Oliveira v. Frito-Lay, Inc. (2d Cir. 2001)

As a result of the huge success of the 1964 recording of “Ipanema,” Gilberto claimed to have earned trademark rights in the 1964 recording, which the public recognizes as a mark designating her as a singer.

Second Circuit clarified that a musical composition can serve a trademark entitled to protection under the Lanham Act.

However, the Court held that a performing artist cannot acquire a trademark signifying herself in a recording of her own famous performance.


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Examples of Sound Marks

U.S. Registration No. 916,522 (July 13, 1971)

U.S. Registration No. 1,395,550 (June 3, 1986)

U.S. Registration No. 2,692,077 (March 4, 2003)

U.S. Registration No. 3,411,881 (April 15, 2008)

U.S. Registration No. 2,821,863 (March 16, 2004)

U.S. Registration No. 2,442,140 (April 10, 2001)

U.S. Registration No. 2450525 (May 15, 2001)

U.S. Registration No. 2519203 (December 18, 2001)


Color Marks

In 1995, the Supreme Court held that a single color

of a product is capable of being registered and

protected as a trademark. Qualitex Co. v. Jacobson

Prods. Co., 513 U.S. 159 (1995).

Single color requires proof of secondary meaning.

Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529

U.S. 205 (2000)


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Examples of Color Marks

Canary Yellow

Robin Egg Blue

Brown


Evaluating Strength of Trademarks

Strongest.…….….………….Weakest……….....Not Protectable

Coined/Arbitrary Suggestive Descriptive Generic •Kodak

•Exxon

•Prilosec

•Centrium

•Advair

•Igloo

•Southern Comfort

•Nautica

•Manhattan Bagel

•General Motors

•Sonoma Valley Wine

•International Business

Machines (IBM)

•Aspirin

•Advil

•Thermos

•Kleenex

** The More Distinctive the Mark, The Stronger The Mark will Be**


(Secondary Meaning Required)

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Secondary Meaning

a/k/a Acquired Distinctiveness

A mark acquires secondary meaning when the consuming public primarily associates that mark with a particular producer, rather than the underlying product.

When trying to determine whether a given term has acquired secondary meaning, courts will often look to the following factors: (1) the amount and manner of advertising; (2) the volume of sales; (3) the length and manner of the term's use; (4) results of consumer surveys. Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983).


Christian Louboutin S.A. v. Yves Saint Laurent (2d Cir. 2012)

“Louboutin’s trademark, consisting of a red lacquered outsole

on a high fashion women’s shoe, has acquired limited

‘secondary meaning’ as a distinctive symbol that identifies the

Louboutin brand.”

Louboutin’s trademark was limited to uses in which the red

outsole contrasts with the color of the remainder of the shoe.


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Generic = Unprotectable

Examples: Convenient Food Mart, Supermarket

Once were trademark, now generic:

Aspirin, Escalator, Thermos, Yo-Yo, and Bikini

Famous marks risk becoming generic:

Scotch Tape

Kleenex

Xerox

Google

Grave Yard of Generic Marks Dictionary


How are Trademark Rights Acquired?

Common Law Trademark: use of the mark in

commerce (registration not required)

Federal Registration: use of the mark in

commerce OR a bonafide “intent-to-use” (U.S.

Patent and Trademark Office)

State Registration


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Best Practices

Use TM or SM designation NOW

Obtain Federal registration – use ®

Do not use as noun, but as an adjective

Band-Aid® Brand adhesive strips

Visa® Credit Card


Protecting your Trademark Rights

The rights to a trademark can be lost through:

Abandonment

Discontinue use with an intent not to resume

Presumption after three consecutive years of non-use

Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd., 817 F. Supp. 1103 (S.D.N.Y. 1993).

Improper Licensing or Assignment

License without adequate quality control or supervision by the trademark owner

Assignment without the corresponding sale of any assets

Rationale: The trademark no longer serves its purpose of identifying the goods of a particular provider. Dawn Donut Co., Inc. v. Hart's Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959).

Genericide


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“Trade Dress” – What is it?

“… the total image and overall

appearance” of a product, package, style of doing business etc. “as defined by its overall composition and design, including size, shape, color texture, and graphics”

It is a WORDLESS TRADEMARK....but certainly not worthless!


The Power of a Famous Look

This is Trade Dress in a package


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Product Shapes as Trademarks


Functionality Doctrine

A product feature is considered functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. Qualitex Co. v. Jacobsen Products Co., Inc., 514 U.S. 159 (1995).

The doctrine prevents the use of a product feature as a trademark where such use would put competitors at a significant non-reputation-related disadvantage.


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Benefits of Federal Registration

Public notice of your claim of ownership of the mark;

A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;

The ability to bring an action concerning the mark in federal court;

The use of the U.S. registration as a basis to obtain registration in foreign countries;

The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;

The right to use the federal registration symbol ®; and

Listing in the United States Patent and Trademark Office’s online databases.


Federal Trademark Application Process

Two Types of Applications:

Use

Intent-to-use

Information Required:

Name and Address of Applicant

Identification of Mark

Designation of International Class(es)

Identification of Goods or Services

USE

Date of First Use

Specimen

INTENT-TO-USE

Declaration

Filing Fee ($275-375 per International Class)


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Federal Trademark Examination Process

Examination Compliance with applicable rules and statutes

Search for conflicting marks

Excluded Categories Scandalous or immoral

Generic name

Insignia of government entities

Identifies, without consent, a living individual

Merely descriptive or misdescriptive

Primarily a surname

Publication

Allowance (Intent-to-Use Only)

Registration


Maintenance of Registered Mark

Continued use in commerce

Declaration of use filed between 5th and 6th

anniversary date

Renewal every 10 years


If properly maintained, term is INDEFINITE

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Trademarks in the News


TM Application: Blue Ivy Carter

January 7, 2012 – Blue Ivy Carter born

January 26, 2012 – BGK Trademark Holdings, LLC

files broad Intent-to-Use Application

February 7, 2012 – USPTO issues Office Action

Section 2(d) Likelihood of Confusion

Section 2(a) False Connection

Section 2(c) Name of a Living Individual

October 24, 2012 – Approved for Publication


http://www.blueivyonline.com/

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Trademark Infringement

Trademark infringement is the unauthorized use of an identical or similar trademark or service mark on competing or related goods and services.

The success of a lawsuit alleging infringement turns on whether the accused infringer's use causes a likelihood of confusion in the average consumer.

Lanham Act,15 U.S.C. § 1114 (registered mark)15 U.S.C. § 1125(a) (unregistered mark).


Elements of Trademark Infringement Claim

To prevail on a claim of trademark infringement, a plaintiff must establish:

Ownership of a valid mark entitled to protection;

Use of the same or a similar mark in commerce in connection with the sale or advertising of goods or services without the plaintiff's consent; and

Likelihood of confusion as to the affiliation, connection or association of defendant with plaintiff, or as to the origin, sponsorship, or approval of defendant's goods, services or commercial activities by plaintiff.

1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005).


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Likelihood of Confusion:

The Polaroid Factors

Strength of the senior user’s mark

Similarity of the marks

Similarity of the products or services

Likelihood that the senior user will bridge the gap

The junior user’s intent in adopting the mark

Evidence of actual confusion

Sophistication of the buyers

Quality of the junior user’s products or services

Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961)


Defenses

Fair Use

Laches, Unclean Hands and Estoppel


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Remedies

The remedies for infringement under the Lanham Act

are statutory and consist of:

Injunctive relief

Accounting for profits

Damages

Attorney's fees in "exceptional cases" and costs.

15 U.S.C. § 1117.


CASE STUDIES

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Thank You


Heslin Rothenberg Farley & Mesiti P.C.

Intellectual Property Law

5 Columbia Circle

Albany, New York 12203

518-452-5600

[email protected]

www.hrfmlaw.com

TRADEMARKS


Heslin Rothenberg Farley & Mesiti P.C.

November 21, 2014

• What is a trademark?

o A trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller's products and distinguish them from the products of another. 15 U.S.C. §1127.

o Serves two primary purposes:

Protect consumers from being misled; and

Protect the goodwill of the entity that owns the mark.

• What is the purpose of trademark law?

o The U.S. Supreme Court said it best. The basic objectives of trademark law are as follows:

"[T]rademark law, by preventing others from copying a source-identifying mark, 'reduce[s] the customer's cost‘s of shopping and making purchasing decisions,' for it quickly and easily assures a potential customer that the this item -- the item with this mark -- is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product." Qualitex Co. v. Jacobson Products Co, 514 U.S. 159 (1995).

• Types of marks

o Trademarks vs. Service Marks

Word

Slogan

Logo

Sound

Color

Page 1 of 8

• Slogan Marks

o A slogan or any other combination of words is capable of trademark significance, if used in such a way as to identify and distinguish the seller’s goods and services from others. Allstate Ins. Co. v. Allstate Inc., 307 F.Supp. 1161 (N.D.Tex. 1969).

• Examples of Slogan Marks

o “So easy a caveman can do it.” Geico, U.S. Reg. 3,193,689.

o “I’m lovin’ it.” McDonald’s Corp., U.S. Reg. 2,978,887.

o “Just do it.” Nike, Inc., U.S. Reg. 1,875,307.

o “All you need is a dollar and a dream.” New York State Division 0f the Lottery, U.S. Reg. 3,751,899

o “Melts in your mouth, not in your hand.” Mars, Inc., U.S. Reg. 1,596,711

• Sound Marks

o A sound mark identifies and distinguishes a product or service through audio rather than visual means. TMEP §1202.15.

o Sounds are protectable when they are arbitrary, unique or distinctive and create in the hearer’s mind an association of the sound with a good or service. In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009); In re Gen. Electric Broad. Co., 199 USPQ 560, 563 (TTAB 1978).

o The fact that sounds and musical compositions are protected by the copyright laws is not incompatible with their also qualifying for protection as trademarks. Oliveira v. Frito-Lay, Inc., 251 F.3d 56, 61 (2d Cir. 2001).

o As with any designation alleged to be a mark, a sound cannot qualify as a mark if it is “functional.”

• Case Study: Olivera v. Frito Lay, Inc., 251 F.3d 56 (2d Cir. 2011)

o Recording artist, Astrud Gilberto, brought action against potato chip seller, Frito Lay, claiming that Frito Lay’s use of recording of artist singing her “signature song” in a television commercial infringed artist’s trademark rights. \

o As a result of the huge success of the 1964 recording of “Ipanema,” Gilberto claimed to have earned trademark rights in the 1964 recording, which the public recognizes as a mark designating her as a singer.

o Second Circuit clarified that a musical composition can serve a trademark entitled to protection under the Lanham Act.

Page 2 of 8

o However, the Court held that a performing artist cannot acquire a trademark signifying herself in a recording of her own famous performance.

• Color Marks

o In 1995, the Supreme Court held that a single color of a product is capable of being registered and protected as a trademark. Qualitex Co. v. Jacobson Prods. Co., 513 U.S. 159 (1995).

o Single color requires proof of secondary meaning. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000)

• Evaluating the Strength of Trademarks

o Coined/Arbitrary

Kodak

Exxon Strongest

Prilosec

Centrium

o Suggestive

Advair

Igloo

Southern Comfort

Nautica Weakest

o Descriptive*

Manhattan Bagel

General Motors

Sonoma Valley Wine

International Business Machines (IBM)

o Generic

Aspirin

Advil

Thermos Not Protectable

Kleenex

• The more distinctive the mark, the stronger the mark will be.

• *NOTE: Descriptive marks are not protectable absent a showing of secondary meaning. (See, infra).

Page 3 of 8

• Secondary Meaning

o a/k/a Acquired Distinctiveness

o A mark acquires secondary meaning when the consuming public primarily associates that mark with a particular producer, rather than the underlying product.

o When trying to determine whether a given term has acquired secondary meaning, courts will often look to the following factors: (1) the amount and manner of advertising; (2) the volume of sales; (3) the length and manner of the term's use; (4) results of consumer surveys. Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983).

• Generic = Unprotectable

o Examples: Convenient Food Mart, Supermarket

o Once were trademarks, now generic:

Aspirin, Escalator, Thermos, Yo-Yo, and Bikini

o Famous marks risk becoming generic:

Scotch Tape

Kleenex

Xerox

Google

• Grave yard of Generic Marks Dictionary

• How are Trademarks Rights Acquired?

o Common Law Trademark: use of the mark in commerce (registration not required)

o Federal Registration: use of the mark in commerce OR a bonafide “intent-to-use” (U.S. Patent and Trademark Office, www.uspto.gov)

o State Registration

• Best Practice

o Use TM or SM designation NOW

o Obtain Federal registration – use ®

o Do Not use as noun, but as an adjective, e.g.:

Band-Aid® Brand adhesive strips

Visa® Credit Card

Page 4 of 8

• Protecting your Trademark Rights

o The rights to a trademark can be lost through:

Abandonment

• Discontinue use with an intent not resume

• Presumption after three consecutive years of non-use

• Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd., 817 F. Supp. 1103 (S.D.N.Y. 1993).

Improper Licensing or Assignment

• License without adequate quality control or supervision by the trademark owner

• Assignment without the corresponding sale of any assets

• Rationale: The trademark no longer serves its purpose of identifying the goods of a particular provider. Dawn Donut Co., Inc. v. Hart's Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959).

• Genericide

• “Trade Dress” What is it?

o “… the total image and overall appearance” of a product, package, style of doing business etc. “as defined by its overall composition and design, including size, shape, color texture, and graphics”

o It is a WORDLESS TRADEMARK....but certainly not worthless!

o Example of trade dress: shape of Coca-Cola® bottle

• Product Shapes as Trademarks

o Volkswagen Beetle

• Functionality Doctrine

o A product feature is considered functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. Qualitex Co. v. Jacobsen Products Co., Inc., 514 U.S. 159 (1995).

o The doctrine prevents the use of a product feature as a trademark where such use would put competitors at a significant non-reputation-related disadvantage.

Page 5 of 8

• Benefits of Federal Registration

o Public notice of your claim of ownership of the mark;

o A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;

o The ability to bring an action concerning the mark in federal court;

o The use of the U.S. registration as a basis to obtain registration in foreign countries;

o The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;

o The right to use the federal registration symbol ®; and

o Listing in the United States Patent and Trademark Office’s online databases.

• Federal Trademark Application Process

o Two Types of Applications

Use

Intent-to-use

o Information required

Name and Address of Applicant

Identification of Mark

Designation of International Class(es)

Identification of Goods or Services

USE

• Date of First Use

• Specimen

Intent-to-use

Declaration

o Filing Fee ($275-375 per International Class)

Page 6 of 8

• Federal Trademark Examination Process

o Examination

o Compliance with applicable rules and statutes

o Search for conflicting marks

o Excluded Categories

Scandalous or immoral

Generic name

Insignia of government entities

Identifies, without consent, a living individual

Merely descriptive or misdescriptive

Primarily a surname

o Publication

o Allowance (Intent-to-Use Only)

o Registration

• Maintenance of Registered Mark

o Continued use in commerce

o Declaration of use filed between 5th and 6th anniversary date

o Renewal every 10 years

o If properly maintained, term is INDEFINITE*

• Trademark Infringement

o Trademark infringement is the unauthorized use of an identical or similar trademark or service mark on competing or related goods and services. 15 U.S.C. §1114, 1125.

o The success of a lawsuit alleging infringement turns on whether the accused infringer's use causes a likelihood of confusion in the average consumer.

• Likelihood of Confusion

o In Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961), the Second Circuit provided eight factors to consider in determining whether a likelihood of confusion exists:

1. the strength of his mark.

Page 7 of 8

2. the degree of similarity between the two marks.

3. the proximity of the products/services.

4. the likelihood that the prior owner will bridge the gap.

5. actual confusion.

6. the defendant's good faith in adopting its own mark.

7. the quality of the defendant's product.

8. the sophistication of the buyers.

• Defenses to Trademark Infringement

o Fair Use

"Classic" Fair Use exists where another's trademark is being usedfor its ordinary, descriptive meaning to describe a product orservice.

"Nominative" Fair Use exists when a third party uses another'strademark not to describe its own products or services but to referto the actual trademark owner or identify a product or service of thetrademark owner.

o Equitable Defenses of Laches, Estoppel and Unclean Hands

• Remedies for Trademark Infringement

o Injunctive relief

o Accounting for profits

o Damages

o Attorney's fees in "exceptional cases" and costs. 15 U.S.C. § 1117.

Page 8 of 8

Documents

TRADEMARKS by Shanna K. Sanders, Esq. Heslin Rothenberg