Presented by:
Blake Bilstad
Senior Vice President, General Counsel and Secretary
Provide Commerce, Inc.
and Lisa M. Martens
Principal
Fish & Richardson P.C.
Misuse of Trademarks by Distributors, Affiliates or Licensees
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[Cutesy image]
It Started So Well...
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Naïve or non-existent licensing restrictions
� Key terms undefined
� Scope of license unclear
� Silent on IP rights
[Some really egregious example here would be nice]
It Started So Well...
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...But Then Things Changed...
Good-faith registration of related marks and domain names (e.g. proflowers.co.uk)
Copying trademarks, text, graphics and images from website (“I thought since I’m an affiliate I could do that.”)
Continued Use after termination date
Blatant infringement after termination
Bad-faith registration of related marks and domain names (e.g. “Kricket”)
“Helpful”
Confused
“Hold-over”
Malicious
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Case Study: Provide-Commerce
The problem: well-meaning licensees, trying to be helpful, went a little too far under their
licenses.
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Case Study: Provide-Commerce
Authorized Provide affiliate copied images from one of Provide’s websites.
Affiliate agreement granted no such rights.
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Case Study: Provide-Commerce
Provide’s affiliate agreement specifically addressed usage of Provide’s copyrighted materials.
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Case Study: Provide-Commerce
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Case Study: Provide-Commerce
Action: Fish & Richardson sent affiliate a “soft” cease and desist letter, explaining use of Provide’s banner ads was not allowed under agreement and requesting immediate removal.
Resolution: Confused Affiliate removed infringing banner ads and used authorized affiliate links.
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Case Study: “SataCom”
The problem: well-meaning licensees were unclear on what they could do under their
licenses.
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Case Study: “SataCom”
SataCom licenses a foreign distributor to distribute its satellite products in the Middle East.
Agreement grants the distributor the rights to use SataCom’s trademarks.
Distributor registers satacom-dubai.com.
Distributor registers trademarks derivative of Satacom’s trademarks.
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Case Study: “SataCom”
SataCom proposes a license for distributor’s unauthorized use of SataCom’s trademarks.
SataCom contacts foreign counsel to investigate remedies available.
SataCom exercises international trademark rights granted by the Paris Convention.
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Case Study: “SataCom”
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Case Study: “SataCom”
[Resolution of issue]
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Case Study: Cricket
The problem: unauthorized distributors blatantly infringed the trademark owner’s
rights.
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Case Study: Cricket
Cricket Communications sells cellular phones and services under its registered trademarks, but only through authorized dealers.
GSM Cellular is an unauthorized retailer in Arizona selling Cricket products using Cricket’s branded logos and displays.
AFTER receiving a cease and desist letter to stop all use of “CRICKET,” GSM registers the trade names “Kricket” and “Kricket Cellular.”
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Case Study: Cricket
[Images of shameless trademark infringement from the Complaint]
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Cease and Desist letter
went ignored.
Case Study: Cricket
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Then came the lawsuit.
Case Study: Cricket
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Case Study: Cricket
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Preventive Medicine
Register everything
� Trademarks
� Copyright
� Company names
� Domain names
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Preventive Medicine
Advantages of federal registration� Evidence of ownership
� Possibility of becoming “incontestable” after five years
� Protection against registration of similar marks
� Nationwide constructive notice and use
� Right to use ®
� Right to sue in federal court
� Basis for foreign registrations
� Right to block imports that infringe the mark
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Preventive Medicine
Anticipate licensee confusion
Call out IP issues explicitly in your agreements
Be consistent across licensee types
� Marketers
� Suppliers
� Resellers
� “New Media” Resellers (Groupon, Living Social)
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Examples (Provide)
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Contact party directly (in writing)
Cease and Desist order from outside counsel
� Negotiate phase-out, assignment
Litigation
PR Response
Enforcement
Questions?
Lisa Martens
(858) 678-5070