Misuse of Trademarks by Distributors, Affiliates or Licensees · Agreement grants the distributor...

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