Embed Size (px)
DESCRIPTION
In today’s challenging economic environment, businesses are looking for ways to improve their competitive advantage. One important way is through branding, which includes one or more trademarks. Some trademarks and brands are stronger than others. This presentation addresses how to develop, use, and protect a powerful brand while avoiding potential infringement litigation.
Citation preview
BRANDING AND TRADEMARKSJohn H. ReesDavid J. Langeland
1. POWER OF A BRAND
VALUE OF INTELLECTUAL PROPERTY
Coca Cola -market capitalization
$104.36 billion-trademark $80.64 billion
Intel-market capitalization
$113.75 billion-trademark $31.11 billion
Microsoft-market capitalization
$258.32 billion-trademark $65.17 billion
WHAT IS A TRADEMARK
Word, name, symbol, device which identifies the source of goods and services
SlogansLogos
Trade dressSoundsColorsSmells
2. CONSIDER ADOPTING ARBITRARY MARK
Generic
Merely descriptive
Inherently distinctive
Arbitrary or fanciful
3. CLEAR THE TRADEMARK
ACQUIRING TRADEMARK RIGHTS
Rights accrue at common law by use in commerce—not by registration
-First to use has rights to trademark-Common law rights
-Area of use-Plus “zone of natural expansion”
-Internet-Service marks vs trademarks
APPLICATION PROCESS FOR FEDERAL TRADEMARK REGISTRATION
Search–applies to any use of a mark
-Knock out
-ComprehensiveFederalStateCommon lawBusiness namesInternet
LIMITATIONS ON TRADEMARKS
May become too strongXEROX®AspirinEscalatorKleenex
-Trademarks must be distinctive-Cannot be generic or merely descriptive-Strongest marks are arbitrary or fanciful
LIMITATIONS ON TRADEMARKS
Terms may over time acquire secondary
meaning and become distinctive
Surnames
Geographically descriptive
STANDARD FOR CONCURRENT USE OF TRADEMARKS
Likelihood of confusion
TRADEMARK INFRINGEMENT
Infringement if consumers are likely to be confused as to the source of the goods and services
form use of a trademark-Does not need to be intentional
Unfair competition
Unauthorized affiliation, sponsorship, or
association
Metatags and initial interest
TRADEMARK INFRINGEMENT FACTORS
* Sight, sound, and meaning—overall commercial impression
* Nature of the goods and services
* Channels of trade
* Sophistication of consumers
* Fame of the marks
* Any actual confusion
* Number and nature of similar marks
EXAMPLES OF TRADEMARK INFRINGEMENT
Examples of trademarks that have been held to be confusingly similar:
--------- BLUE CROSS/BLUE SHIELD and THE CURE FOR THE BLUES* JELLIBEANS and LOLLIPOPS* LONDON FOG and SMOG
* TORNADO and CYCLONE* MIRACLE WHIP and WONDER MIX
4. REGISTER THE TRADEMARK
TRADEMARK INFRINGEMENT REMEDIES
Lost profits
Injunction
Attorney’s fees
Damages
Court may award three times damages
REGISTRATION OF TRADEMARKS
Registration grants additional rights
Federal registration
Intent-to-use application
Actual use application
State registration
Registration enhances rights, not necessary for infringement claim
5. ADOPT USING GUIDELINES AND ENFORCE THEM
TRADEMARK SYMBOLS
is a federally registered trademark
is for all other trademarks
® ™
What if the trademark notice is missing
No profits or damages without actual notice of registration
1. POWER OF A BRAND2. CONSIDER ADOPTING ARBITRARY MARK3. CLEAR THE TRADEMARK4. REGISTER THE TRADEMARK5. ADOPT USING GUIDELINES AND ENFORCE THEM6. SEARCH DOMAIN NAMES7. REGISTER DOMAIN NAMES8. ADOPT ENFORCEMENT POLICY FOR TRADEMARKS AND DOMAIN NAMES9. MONITOR TRADEMARKS
TRADE NAMES VS TRADEMARKS
Trade names identify a business, trademarks identify source of goods and services
--A term may function as both
Standard for concurrent use of trade names
TRADE NAMES VS TRADEMARKS
Right to use corporate names does not derogate from the common law the principles of equity of the statutes of this state or of the United States with respect to the right to acquire and protect names and trademarks
Distinguishable standardA name is distinguishable form other
names, trademarks, and service marks on the records of the division if it contains one or more different letters or numerals; or has a different sequence of letters or numerals from the other names on the division’s records
APPLICATION PROCESS FOR FEDERAL TRADEMARK REGISTRATION
File applicationExact mark with colorsIdentification of goods and servicesDate of first use and evidence for fileSpecimen
Substantive examination by PTO
Respond to office actionsSuspensionRefusal to register
APPLICATION PROCESS FOR FEDERAL TRADEMARK REGISTRATION
Publication
Registration
Notice of allowance and statement of use for ITU
TRADEMARK FAIR USE
* Necessary to describe the plaintiff ’s product or service and defendant’s product or service
* The defendant’s conduct or language reflects the true and accurate relationship between plaintiff and defendant’s products and services—does not suggest sponsorship, endorsement, or affiliation
* The defendant used only so much of the plaintiff ’s mark as is necessary to describe the plaintiff ’s products or service
TRADEMARKS AND DOMAIN NAMES
Domain names may function as trademarks
Domain names may infringe on the trademarks of others
CybersquattingUDRPACPA
KEYWORDS AND ADWORDS
How they work
Natural or organic results-Results produced by search
Sponsored links-Generated by advertisers using Google’s AdWords™ advertising service-Pay per click service-Trademarks used to move up the list
KEYWORDS AND ADWORDS
Use in commerce: the bona fide use of a mark in the ordinary course of trade
Issues
KEYWORDS AND ADWORDS
Likelihood of confusion
* Not used to identify source* Analogized to placing generic products next to trademark brands in a store* Only an internal use, not use in commerce
Split in decisions
* No use in commerce because mark not used on any goods, container, displays, or the like and did not use the mark to advertise services
POLICY ON RESPECTING INTELLECTUAL PROPERTY RIGHTS
What is business policy on use of intellectual property
What is the policy on the use of intellectual property of others
BRANDING AND TRADEMARKS
Questions and answers
For additional questions
John Rees [email protected]
David Langeland [email protected]
