By Susan Dierenfeldt-Troy, Esq. Florida Licensed Attorney ......Product packaging or instructions (e.g., hedge trimmer) As permanent part of the product (computers, printers, kitchen

By

Susan Dierenfeldt-Troy, Esq.Florida Licensed Attorney and Member of the U.S.

Patent Bar

Troy & Schwartz, LLCWhere Legal Meets Entrepreneurship

Copyrighted 2018. All Rights Reserved.


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If you would like to delve into more detail about trademark law after reviewing this e-book, visit our

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The information presented in this e-book IS NOT LEGAL ADVICE and is solely for basic information purposes. If you are contemplating any action which may have legal consequences, you should consult with an attorney.


1. DEFINITIONS & EXAMPLES2. LEGAL FOUNDATION OF U.S. TRADEMARK LAW3. COMPARISON WITH COPYRIGHTS4. THE TRADEMARK APPLICATION PROCESS 5. THE LIKELIHOOD OF CONFUSION TEST6. MERELY DESCRIPTIVE/GENERIC MARKS7. DOMAIN NAMES AND TRADEMARK LAW8. INTERNATIONAL TRADEMARK RIGHTS9. INFRINGEMENT REMEDIES10. ASSIGNMENT AND LICENSING OF TRADEMARK RIGHTS11. FINALLY….THE TM12. SUMMARY


A trademark or service mark is a distinctive word, phrase, logo, or graphic symbol that allows consumers to identify the manufacturer, merchant, or service provider responsible for the goods or services.

Note that the focus of trademark law is on the protection of the consumer.

The objective is to prevent consumer confusion as to the source of the goods and to prevent “palming off” where one producer attempts to pass of its goods as originating from another producer.


Examples of Well-Known Marks Whopper® Burger King® Lexus® H&R Block® Microsoft® Apple® Publix® Phoenix University® Tylenol®


Marks need not consist of any words; can consist of a logo only.◦ Apple logo ◦ Nike logo◦ McDonald’s golden arches logo

Marks can also consist of a combination of words and a logo.◦ Starbucks Siren and Words

Distinctive and creative slogans may be granted trademark registration.

The color of a product may be used as a mark if over time, consumers have come to view the color as identification of source of the product and the color has no function.

Color may be a element of a mark.


Trade dress is associated with a product’s distinctive shape, packaging, etc., and registered trademark protection may be available for such “distinctive” attributes and may be accorded Registered TM protection.

One of the most famous examples of distinctive packaging trade dress is the distinctive Coca Cola® bottle shape which was granted a “trade dress” type of registered trademark on Feb. 1, 1977 (Reg. # 1057884).

Further discussion beyond the scope of this e-book.


No express basis found in the U.S. Constitution (compare the Constitution’s objective to promote the arts and sciences).

U.S. Constitution under the commerce clause provides Congress with the power to regulate interstate commerce. ◦ Lanham Act is the federal statute governing federal

trademark registration. It pertains to marks used in interstate commerce which Congress has the right to regulate under the Constitution.

The United States Patent and Trademark Office (USPTO) is the government agency in charge of FEDERAL trademark registration.


All states, including Florida, also provide for registration of trademarks/service marks.

Solely state registered marks are limited to relying on state law protections.

Marks which are registered simultaneously in both a state and the USPTO may rely on both federal and state law protections.

The Lanham Act forbids registration of immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead. This limitation on marks such as “Slants” and “The Red Skins” is being challenged in the courts as of March 25, 2019.


Ornate logos may qualify for both copyright protection and trademark protection.◦ Example: The Starbucks Siren Logo is Copyrighted

(alone – no words)◦ Simple logos are generally not suitable for © and will

be denied registration. The effective life time of the copyrighted logo

may end up being longer then a logo which also has been granted a registered trademark. Trademark owner must periodically “renew” the registration.


A copyright owner DOES NOT have to actually be using the copyrighted works to be entitled to copyright protection.

Ditto for patent owners (but maintenance fees must be periodically paid to keep the patent active during its lifetime, generally about 20 years from the effective date).


Registered Trademark owners will lose their registered status if they fail to file a Section 8 Declaration showing that the mark is still in use between the 5th and 6th year of the mark’s registration date, the 9th and 10th year, and then in 10 year increments thereafter.

Fail to comply with the Section 8 requirement cancellation of the registered mark by the USPTO.

Registered marks, abandoned applied-for marks, and cancelled marks are all listed at www.USPTO.gov.

AGAIN, USAGE OF A REGISTERED MARK IS REQUIRED TO MAINTAIN REGISTRATION STATUS!


http://www.uspto.gov/

Applications are submitted to the USPTO. On-line applications are par for the course. In the

past, the filing date would be treated as the date of deposit of an application forwarded as overnight express mail to the USPTO office in Alexandria, Virginia. No more. Filing date is the date of receipt of the Express Mail packet.

On-line filings are also cheaper (currently $275.00 or $325.00 per international classification instead of $400.00 for hard copy submissions).


Intent-to-Use (1B) Applications◦ The Lanham Act permits the applicant to file

what is known as an intent-to-use application or a 1B application with the USPTO to “reserve” the filing date.◦ This type of application permits the applicant

time to develop the associated mark and “get it into” interstate commerce. REMEMBER, to actually obtain a federally registered mark, the mark must be in use in interstate commerce for all specified goods and services. Shown by the filing of a Statement of Use.


What is an international classification?◦ Every type of good and service for which trademark

registration is sought must be categorized into 1or more International Classes for goods (classes 1-34) and into 1 or more International Classes for services (classes 35-45).◦ Some examples: IC class 025 covers clothes IC class 030 covers food and beverage items IC class 036 covers insurance and financial services◦ Application needs to specify products/services

which are being offered under the proposed mark.


Some Common Misconceptions Many times applications are filed with a non-specific

descriptions of goods and/or services. Amendment will be required.

Or an application is filed that is awfully close to an existing mark and the applicant thinks that a different service or product within the same IC class (e.g., video instruction versus webinar instruction) as an existing mark will be OK and be registered. It may or it may not. Complex area of trademark law.

Trademark law may seem simple, but it is not!


Specimens showing how the mark is being used in interstate commerce must be provided to the USPTO. For 1B applications, provided with SOU.◦ Specimens for Trademarks The specimen must be associated with the actual

product in some way. Business letter head, business cards, etc. are not appropriate specimens for trademarks.

◦ Specimens for Service Marks Business cards, website pages, etc. providing that the

specimen provides information on the nature of the services being provided under the mark.

◦ Website screenshots may be used as specimens providing certain specimen requirements are met.


Some examples of appropriate specimens for trademarks: Label attached to the dress which contains the mark; Pharmaceutical or reagents for a clinical assay package

insert which shows the mark; Food packaging which shows the mark (Starbucks® paper

cup) Product packaging or instructions (e.g., hedge trimmer) As permanent part of the product (computers, printers,

kitchen appliances, etc.) E-commerce products: Websites which allow a consumer

to order good(s) with a registered trademark should be consistent with point-of-sale considerations.

Specimens must show the mark and the provider of the goods/services.


Other Important Considerations ◦ The person signing the application is stating under oath

that the proposed mark presented in the application is being used in interstate commerce for the goods and/or services specified in the application (1A applications) or that the person has a bona fide intent of using the proposed mark in commerce for the goods and/or services specified in the intent-to-use application (1B applications).◦ NEVER use the ® until if and when the mark is actually

registered by the USPTO. Against the law to indicate that the mark is registered when it isn’t.◦ Keep records showing the date the good/service was first

used/offered anywhere and sold/offered in interstate commerce (may be the same date).


First response from the USPTO is taking about 4-5 months these days.

For intent-to-use applications, the applicant will often list a broad range of products/services within a specified IC class. The Statement of Use, which may be submitted up to three (3) years after a Notice of Allowance is issued should only include the goods/services products in interstate commerce at the time the SOU is filed. ◦ Example. Applicant filed an intent-to-use application for IC class 27 and

listed both floor coverings and wall hangings with the bona fide intention of selling both goods under the mark. At the time the Statement of Use is being prepared for filing, the mark is only being used for floor coverings products (carpets and laminated woods). The goods listed under IC class 27 should be narrowed to specify only floor coverings.


If the proposed mark receives “preliminary” approval by the examining attorney, the proposed mark will be published in the Official Gazette for opposition purposes. The Lanham Act permits any party who may be damaged by the registration of the mark to challenge the registration in a formal opposition proceeding before the Trademark and Appeals Board.

If no opposition proceeding is filed, the 1A mark will be registered or a Notice of Allowance will issue for a 1B application.

Various legal arguments and considerations to prevail in an opposition proceeding (see also slide 24) or to overcome an initial rejection by an examiner are beyond the scope of this e-book. It is noted that an examiner’s rejection may be appealed to the Trademark Trial and Appeal Board (TTAB).


Prior to filing any trademark application, a thorough trademark search is in order for a number of reasons.

To avoid infringing an existing mark and a lawsuit.

To enhance the possibility of obtaining registration by applying for a mark which will meet the confusedly similar test either at the examination stage or in an opposition proceeding.

To save the time and expense of developing and promoting a business name or product only to run into a legal problem down the road or be denied registration.


Small businesses may make the mistake that their new name is free and clear of any problem of the state allows them to form a business entity such as a corporation or limited liability company or to register a fictitious name under a particular name.

IMPORTANT TO UNDERSTAND that forming or registering a name with the appropriate state agency DOES NOT MEAN that someone else does not have a federal or state trademark for the same or a similar name. That someone else may assert those rights, often by first sending a cease and desist letter.


USPTO will refuse registration of a mark on likelihood of confusion grounds with an existing registered mark.

A registered mark owner has the right to seek redress in the courts for allegedly infringing marks which often involves allegations of likelihood of confusion. To win a trademark infringement lawsuit, the plaintiff must prove the likelihood of confusion. A showing of actual confusion is not required.

Many factors enter into the calculus at the application stage and the lawsuit stage and are beyond the scope of this e-book. The following example, however, taken from an actual trademark infringement case provides a nice illustration of 2 factors that often come into play: the marketing channels for the two “competing” marks and the sophistication of the consumers


Lexis® provides computerized legal research services to attorneys.

Lexus® is a luxury car brand. Lexis® sued Toyota, the owner of the Lexus®

mark, for trademark infringement. Toyota won because:◦ Of the sophistication of the consumers and the vast

differences in the Lexus product and the Lexis service. Compare hypothetical case where alleged

infringement involves mass market products: Tylenol® (long-established pain reliever sold by Johnson & Johnson) versus Ty-lenolly (aspirin brand).


The ideal mark is a coined, arbitrary, or suggestion term.

Marks that describe a property of the good/service may be rejected on merely descriptive grounds.

Providing the “merely descriptive” mark is not also rejected on likelihood of confusion of grounds, the mark may be registered on the Supplemental Register.


Domain names may be trademarked. Domain name owners which are conducting business under

names confusedly similar to an existing trademark can be sued for trademark infringement.

Cybersquatting appears to be somewhat of lesser of a problem than in the past (a) because companies now are routinely registering their domain names; and (b) thanks to remedies now available under US law Anti-Cybersquatting Consumer Protection Act) and the availability of an international arbitration system created by the Internet Corporation of Assigned Names and Numbers (ICANN).

Domain name registrants should verify that nobody is using the name as a trademark for similar goods and services.


gTLDs will “expand” domain name extensions and may have trademark rights implications.

Beyond the scope of this e-book.


Trademark rights are territorial. Trademarks must be applied for in every country where the

owner wishes to “enter” for commercial purposes. All countries generally grant trademark protection to the first to

register a mark. In the U.S. the applicant must generally state the date of first use anywhere (e.g., locally) and in interstate commerce.

The U.S., via the Lanham Act, allows nationals of the Paris Convention for Protection of Industrial Property to file U.S. applications without alleging use. However, eventually the mark owner will need to use the mark here in the United States to enjoy the legal protections afforded registered marks.

The Paris Convention allows a foreign applicant in a member country to use the filing date from its home application if the foreign application is filed within 6 months of the filing of the home trademark application.

Foreign trademark owners may seek registration in the U.S. through 35 U.S.C. § 44(e) of the Lanham Act.


The United States is also a member of the Madrid Protocol which helps simplify the trademark filing process in other countries from an administrative perspective.

Under the Madrid Protocol, an applicant is entitled to the earlier filing date of his/her application if the application is filed within 6 months of the home application.

Another important reason for a thorough TM search: Say that a German company is considering filing a TM application with the USPTO after filing through the Madrid protocol with WIPO as the central registration office. If the application is filed in time under Madrid Protocol rules, that applicant will “enjoy” the benefit of the earlier filing date even if actually filed after the application of a U.S. company. Also a U.S. company contemplating expansion into other countries needs to know of problematic registrations in these countries that could prevent registration.


US Trademark Law vs Other Countries

United States legal rights associated with unregistered marks known as common law rights. These rights are slightly different from the rights acquired for a trademark or service mark registered a trademark with the USPTO.

Other countries grant rights ONLY UPON registration of the mark with the appropriate governmental agency. Whether one actually “used” the mark in commerce in the foreign country is of little or no legal significance. Compare with USPTO requirements for registration where actual use is required.


Foreign applicants are given some leeway on the USPTO’s use requirements. However, foreign applicants need to understand that use needs to occur in a “reasonable” amount of time.

Example: The owner of a registered mark in Brazil plans to franchise a food restaurant in the U.S. It has a registered mark in Brazil and wishes to file an application under § 44(e). By signing the application, the Brazilian owner is asserting that it has a bona fide intent to actually use the mark in the U.S. To avoid problems, the owner should maintain records (e.g., a formal business plan, communications with potential U.S. franchisees, etc.) to establish it is diligently working towards getting its U.S. mark into interstate commerce. What amounts to a “reasonable time” in the event the mark is contested involves a factual inquiry and depends on the nature of goods/services. Beyond the scope of this e-book.


Trademark infringement lawsuits can be brought in either state court or federal court if the mark is federally registered. Suits often brought under the Lanham Act and State’s Unfair Competition Laws.

Courts may be less inclined to grant preliminary and permanent injunctive relief than in copyright and patent infringement lawsuits because of the competing interest of legitimate fair competition (remember consumer focus) in the market place.

Prevailing plaintiff is entitled to an accounting (defendant’s profits) in addition to damages (actual money damages suffered as a result of the infringement). Attorneys fees generally awarded in clear-cut cases of willful infringement.


The U.S. Customs and Border Patrol is instrumental in protecting U.S. registered marks and patented inventions and U.S. registered copyrights in this country. Customs will “seize” counterfeit goods if they have been made aware, through proper e-recordation, of the U.S. registered mark.

Also applies to registered copyrights (i.e., copyrights actually registered with the U.S. Copyright Office) and patented inventions. Seizure notice will be issued to the importer who may petition for administrative relief or elect to bring suit in federal district court to recover the goods.


As with copyrights and patents, trademark rights can be assigned and licensed. Assignment of trademark rights more typically occurs when business is sold. Assignments should be recorded with the USPTO.

Licensing of trademarks requires much more oversight by the owner relative to licensing by copyright and patent owners. The licensor must MAINTAIN CONTROL over the use of the mark and the quality of the products/services provided under the mark. The underlying policy is protection of the consumer who has established expectations for the products/services. Adequate supervision could result in abandonment of the mark. Franchising often involves licensing of the the Franchisor’s registered marks.


Even if a company or person does not have a registered trademark/service mark, TM can be used a superscript to put others on notice that the user views the words, logo, etc. as a protectable mark. This approach is often used by trademark applicants as a sort of “pending registered trademark” indicator although it can be used without ever applying for a registered trademark. The TM has no legal significance, except it may help overcome a claim of innocent infringement by a defendant if the TM user ever brings an action under state unfair competition laws.


Trademarks and Service Marks can be an extremely useful way to build brand name recognition and loyalty. Registered trademarks are valuable intangible business assets.

The potential legal complexities of the trademark application process and infringement lawsuits should not be ignored.

Branding/business activities should be in sync with trademark application/infringement considerations including entering foreign markets.

For anyone not intending to file an application for a registered trademark, it is still STRONGLY recommended that a company name and/or domain name, etc. not be used until at least a basic search has been conducted to ensure that the proposed will not “interfere” with another’s trademark protections whether under federal law or state unfair competition laws.


Documents

By Susan Dierenfeldt-Troy, Esq. Florida Licensed Attorney ......Product packaging or instructions (e.g., hedge trimmer) As permanent part of the product (computers, printers, kitchen