Copyright © 2012 Allen M. Lee, A Professional Law Corporation

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Allen M. LeeA Professional Law Corporation

allen@allenmlee.com(408) 249-2735

www.allenmlee.com

An Introduction to Trademarks & Brand Protection

Topics to be Covered1. Overview of intellectual Property.

2. Trademarks and other types of marks.

3. Selecting a mark.

4. Searching your mark.

5. Registering your mark.

6. Proper trademark usage.

7. Protecting your mark.

8. Q&A

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What is Intellectual Property?

Intellectual property is “property (as an idea, invention, or process) that derives from the work of the mind or intellect; also, an application, right, or registration relating to this.” 

Merriam-Webster’s Collegiate Dictionary at 650 (11th ed. 2003). 

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What is Intellectual Property?, cont’d.Federal and state laws recognize property rights in different forms of information, including

(i) copyright which protects expressive information,

(ii) patent which protects technological information,

(iii) trademark which protects symbolic information, and

(iv) trade secret law which protects proprietary information such as formulas, patterns, compilations, devices, methods, techniques or processes.

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Why Should I Care about Trademarks?Brand Value in 2011 ($M)

1. Apple - $153,285 2. Google - $111,498 3. IBM - $100,849 4. McDonalds - $81,016 5. Microsoft - $78,243 6. Coca-Cola -$73,753 7. AT&T - $69,916 8. Marlboro - $67,522 9. China Mobile - $57,326 10. GE - $50,318

Source: BrandZ.com

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Trademarks often are one of a company’s most valuable assets.They help identify and distinguish your goods or services from others.They help consumers identify the level of quality they will receive.They symbolize the reputation of your company.They help create customer loyalty and influence purchasing decisions.Allows for the assertion of claims when others attempt to copy or pass off.

Overview – What is a Mark?A trademark is a “source identifier.”

Types of Marks:

Trademark– A trademark is a word, phrase, symbol or design, or a combination thereof,

that identifies and distinguishes the source of the goods of one party from those of others.

Service mark– A service mark is a word, phrase, symbol or design, or a combination

thereof, that identifies and distinguishes the source of a service rather than goods.

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Types of Marks, cont’d.Certification mark

– A certification mark is any word, phrase, symbol or design, or a combination thereof owned by one party who certifies the goods and services of others when they meet certain standards. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a certification mark is to indicate that certain standards have been met, use of the mark is by others.

Collective mark– A collective mark is any word, phrase, symbol or design, or a combination

thereof owned by a cooperative, an association, or other collective group or organization and used by its members to indicate the source of the goods or services.

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Types of Marks, cont’d.Phrase: Johnson & Johnson Corporation’s “No More Tears” for baby shampoo.

Sound: The 3-note chime for NBC for television broadcasting services, or Sprint’s pin drop for telecommunications services.

Color: The color pink for Owens-Corning’s fiberglass insulation.

Smell: U.S. Reg. No. 2,463,044 for the scent of cherry used in connection with automotive lubricant.

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Examples:

SONY

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Basic word mark Logo & word mark

Stylized word mark Design mark

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Examples:

PEPTO-BISMOL®COCA-COLA®BUDWEISER®WAL-MART®

STARBUCKS® CNN®

Types of Marks, cont’d.Trade Dress.

The trade dress of a product involves the total image of a product and may include features such as size, shape, color or color combinations, texture or graphics.

Generally two types:1) Product packaging/labeling; and2) Product design (overall configuration/appearance of a product).

(U.S. Reg. No. 1057884, The Coca-Cola Company)

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Special Rules for “Trade Dress”

Must be “non-functional” (e.g. not essential to the use or purpose of the article or does not affect the cost of quality of the article; no competitive advantage to design).

Product packaging may be inherently distinctive so secondary meaning not necessarily required. See Two Pesos, Inc. v. Taco Cabana, 505 U.S. 763 (1992).

Product design/configuration cannot be inherently distinctive. Secondary meaning always required. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000).

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The “Spectrum” of Marks

Some trademarks are stronger and easier to protect than others. In assessing the strength of a mark, courts recognize four categories of marks:

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Strong (more protection) Weak (less protection)

Arbitrary/

Fanciful

Marks

Suggestive

Marks

Descriptive

Marks

Generic

Marks

The “Spectrum” of Marks, cont’d.Generic Marks

– These are terms that are the common names for a type of product.

– Can never function as a mark.

Examples:

YELLOW PAGES for yellow-colored telephone directory books.

BANKS for banking services.

LOW-CALORIE BEER for beer.

COMPUTER SCREEN WIPES for screen wipes.

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The “Spectrum” of Marks, cont’d.Descriptive Marks

– Marks that convey an immediate idea of the ingredients, qualities or characteristics of the goods.

– Protectable only if the mark acquires secondary meaning, i.e., the consumer learns to associate the mark with a single source.

Examples:

ICE for beer.

BABY BRIE for mini-size brie cheese.

ARTHRITICARE for pain relieving gel for arthritis.

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The “Spectrum” of Marks, cont’d.Suggestive Marks

– Marks that suggest something about the goods, but require imagination, thought and perception to reach a conclusion as to the nature of the goods.

– Inherently distinctive, automatically protectable.

Examples:

CHICKEN OF THE SEA for tuna.

BLISS for beauty salon services.

COPPERTONE for suntan lotion.

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The “Spectrum” of Marks, cont’d.

Arbitrary/Fanciful Marks

These are inherently distinctive. Automatically protectable without secondary meaning, and are the strongest types of marks.

Arbitrary marks are common words applied in unfamiliar ways. Examples: CAMELS for cigarettes, APPLE for computers/electronics.

Fanciful marks are coined (made-up) terms with no dictionary meaning.Examples: EXXON for retail services featuring fuel, KODAK for photographic films and photographic papers, COCA-COLA for non-alcoholic beverages, ROLEX for watches.

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Selecting a Trademark

Choose a mark that is arbitrary, fanciful, or suggestive (inherently distinctive).Choose a mark that is easy to pronounce and remember.Do not choose a mark that is merely descriptive or generic.Do not choose a mark that has negative connotations in foreign languages.Do not choose a mark that may become passé in a few years.

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Searching a Mark

Purpose of a Search

Ferret out potential conflicts.

Provides an idea of the strength/protectability of the mark.

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Searching a MarkScope of Search

• U.S. Trademark Register, including pending and previously pending trademark applications and registrations.

• State registrations.• Internet search engines.• Brand magazines/Market directories.• Telephone directory listings.• Domain names.• Online databases and industry publications directed to the goods or

services being searched.• Trade name listings.• Reported decisions.

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Registering your Mark.

Rights arise by use – The “first user” principle.

“Use” of a mark– Use on goods– Use with services

So why register?

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Registering your Mark, cont’d.

Federal registration creates certain substantive and procedural rights.

A registration on the Principal Register is prima facie evidence of • the validity of the registered mark;

• the registration of the mark;

• the registrant's ownership of the mark;

• the registrant's exclusive right to use the registered mark;

• use in interstate commerce prior to registration (for use-based applications); and

• continued use since the filing date of the application.

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Benefits of Federal Registration, cont’d.

Constructive nationwide notice of the trademark owner's claim (so as to rebut any defense of good faith adoption and use made after the date of registration).

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 bearing an infringing mark.

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Benefits of Federal Registration, cont’d.A registration is subject to cancellation for five years from the date of registration by anyone who believes that he or she will be damaged by the registration. After this time, a registration may only be cancelled due to certain statutory grounds. 15 U.S.C. § 1064.After 5 years, a Principal Register registration may become “incontestable” as conclusive evidence of the registrant's exclusive right to use of the mark, subject to certain statutory defenses. Must file a Section 15 Affidavit of Incontestability.Contingent on registration of a mark, the filing of an application establishes a constructive first use date, nationwide in effect, as of the filing date of the application. 15 U.S.C. § 1057(c).

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Filing a Trademark with the USPTOApplication process

– Completion of the formal application.

– Submission of a drawing showing the mark.

– Submission of at least one sample mark as actually used in U.S. commerce.

Application review by USPTO.

Publication and potential opposition by third parties.

Must have actual use before registration will issue.

Supplemental Register available for merely descriptive marks.

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Bases for Filing U.S. Trademark Applications

Use-based trademark applications.

Intent-to-use (“ITU”) applications.

Ownership of a foreign registration.

Ownership of a pending foreign application.

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Federal Registration of Trademarks

Important Federal Registration Deadlines:

Between 5th and 6th years:

File Section 8 affidavit of use.

After 5 years of consecutive use:

File Section 15 Affidavit of Incontestability. Recommended but not required.

Every 10 years after registration:

File Section 9 renewal and Section 8 affidavit of use.

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State Registration of Trademarks

Trademarks can also be registered at the state level under state law.

In California, the Secretary of State’s office maintains registration and all updates of California state trademarks and service marks.

Website at http://www.sos.ca.gov.

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Proper Trademark UseContinuous Use. Do not let your mark become abandoned. Continuously use your mark in its registered form with the goods or services listed in your registration.

Prevent Brand Genericide. Accompany mark with generic term. Do not let your mark become the common or generic term for your product. Remember, generic terms cannot function as a trademark.

Examples: “KLEENEX brand tissues”

“XEROX copiers”

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Proper Trademark UsePast victims of genericide:

ASPRIN HEROIN

ESCALATOR

THERMOS

ZIPPER

YO-YO

RAISIN BRAN

CELLOPHANE

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Proper Trademark UseGrammar. A mark should be used as an adjective, not a noun or a verb. The Mark (adjective) modifies the generic term (noun).

Yes: “XEROX copiers” No: “Please Xerox the report.”

• A mark should not be used in the plural unless the mark itself is plural.

• A mark should not be used in the possessive form unless the mark

itself is possessive.YES: JACK DANIEL’S whiskey. NO: Jack Daniels whiskey

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Proper Trademark UseSet the Mark Apart. Marks should be set off from the surrounding text.

Examples:• Large type – all caps or initial caps.• Quotation marks.• Use of different colors.• Distinctive lettering.• Different font or stylization.

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Proper Trademark UseTM and Registration Notices. Provide notice of your trademark rights.

Examples:• “TM” or “SM” symbol.• The letter R enclosed in a circle: ®• Reg. U.S. Pat. & Tm. Off.• Registered in U.S. Patent and Trademark Office.• Use of the word “brand” following the mark.• Use a credit line. Example: XEROX is a registered trademark of

Xerox Corporation.

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You Snooze…You Lose

Must enforce what you’ve got– Trademark watch services.

– Employees monitoring the Internet.

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Trademark InfringementIs the mark likely to cause consumer confusion as to the source of the goods and/or services

– Strength of the mark– Similarity of the mark– Proximity of the goods– Likelihood of expansion of the product lines– Evidence of actual confusion– Marketing channels used– Type of goods or services and the degree of care likely to be exercised by

purchasers– The second user’s intent in selecting the mark

 

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Strength of the mark

Courts look to the following:1)The type of mark, e.g. arbitrary, suggestive, descriptive, or generic.2)The extent of third-party use.3)Extent of use of mark, e.g. advertising and sales.

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Similarity of the marks

The marks must be considered as a whole.1)Appearance2)Sound3)Meaning4)Commercial impression

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Proximity of the Goods/Services

Primary question is whether the products are related in some manner likely to lead the public to mistakenly believe that one product emanates from or is sponsored by another.

Categories:1.Competitive2.Non-competitive but related3.Non-competitive and unrelated

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Likelihood of Bridging the Gap

Defined as the senior’s users interest in preserving avenues of expansion and entering into related fields.

Either actual plans for expansion, or consumer’s assumption that expansion is likely.

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Evidence of Actual Confusion

Can be strong evidence showing there is likelihood of confusion.

Examples:•Evidence showing an actual purchase was affected by confusion.•Inquiries as to possible connection between the parties.•Number of instances of confusion, as compared to total sales.

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Purchaser Sophistication

Sophisticated consumers may be expected to exercise greater care.

Generally speaking, buyers exercise greater care in their purchase of expensive goods.

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Defendant’s Intent

Bad faith may be sufficient to justify the inference of likely confusion.

Some cases have held that where a defendant adopted a mark with the intent of deriving benefit from plaintiff’s reputation, this is sufficient to justify the inference that there is confusing similarity.

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Secondary Meaning: Consumer association of the mark with a single source. Also known as source association or acquired distinctiveness. When the primary significance of the term in the minds of the consuming public is with a single source.

Direct Proof•Unsolicited publicity, e.g. news articles•Licenses and requests for licenses•Consumer correspondence•Testimony by consumers•Survey evidence

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Inferential Proof•Long use•Extensive sales in dollars or units, and geographic coverage•Advertising dollar expenditures•Sample advertisements from various media•Circulation figures for advertising media used•Trade-show and point-of-purchase displays•Advertising by customers•Copying by others

Trademark DilutionThe lessening of the capacity of a famous mark to identify and distinguish goods or services.

Blurring and tarnishment.

Plaintiff need only to prove a likelihood of dilution.

 

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Q & A