Silver Linings Playbook: Best Practices in Trademark ... · Silver Linings Playbook: Best Practices in Trademark Clearance & Selection ... Slogan (large bottle): ... • Translate

Silver Linings Playbook:

Best Practices in Trademark Clearance & Selection

Stephen Coates, Susan Natland & Jonathan Hyman

ACCA Doubleheader, Disneyland, April 30, 2013

2© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved.

Why Clear a Mark?

Goals:

• Manage risk

–Lower risk of a lawsuit, C & D or other objection

–Lower risk of having to rebrand

• Manage costs

– Will prosecution be costly?

– Is a third party objection likely?


Why Clear a mark?

** Duty to search before adopting a mark?

– No affirmative duty, but good business practice

– A search could rebut claim of willful infringement

Assess three areas:

1. Risk of conflict

2. Likelihood of registrability

3. Protectability/Scope of protection


Logos

Case Study: New Beer Launch

Two Versions

• SASQUATCH = 12 oz (normal size) bottle name• DWARF = 6 oz (small size) bottle name


Case Study: New Beer Launch

Bottle Shape/Ornamentation:- Mini bottle for the DWARF beer- Beer cap ornament for small

bottle- Foot design embossed on the

beer cap of large bottle

Slogan (large bottle): “THE MONSTER OF BEERS”

Slogan (small bottle):“SMALL SIZE…SAME BIG TASTE”

Flavors: ALASKAN JUNIPERCANADIAN MAPLE


New Beer Launch: Roll-Out Plans & Timing

12 Months to 18 MonthsRoll‐Out DWARF Beer in the U.S. and Abroad

3 to 6 MonthsRoll‐Out SASQUATCH Beer in the U.S.

6 Months to 12 MonthsRoll‐Out SASQUATCH Beer Abroad in AU, EU and CA


The Draft: Creating a Strong Brand?

Business and LEGAL Attributes of a Good Brand

• Appropriate • Credible • Appealing • Relevant• Memorable• Enduring• Easy to Pronounce

PROTECTABLE AVAILABLE

Business

Legal


ArbitraryFancifulSuggestiveDescriptiveGeneric

The Draft: Is the Brand Protectable?

BRAND STRENGTH CONTINUUM

The common name for a product

Merely describes a function,

characteristic, or purpose of the

product

Brings to mind a function, characteristic

or purpose of the product but in a

suggestive/creative way

A coined term or a word with no significance in relation to the goods or services with which it is

used

APPLE(apples)

RAISIN BRAN (cereal)BABY BRIE (brie cheese)

LE CROISSANT SHOP (café)

KODAK (film)APPLE (computers)

EXXON (oil)

COPPERTONE (suntan oil)CHICKEN OF THE SEA (tuna)

WHIRLPOOL (washers)

No Protection

InherentlyProtectable

Capable of Eventually Becoming Protectable


The Draft: Team Descriptive vs. Team Suggestive

Descriptive SuggestiveCHAP STICK (skin preparation stick) ORANGE CRUSH (orange drink)RAISIN-BRAN (raisin and bran cereal) BOILING CRAB (seafood restaurant)HOLIDAY INN (motel) 7-Eleven (food store chain)TWENTY FOUR HOUR FITNESS (gym)

L’EGGS women’s hosiery

WORLD BOOK (encyclopedia) ROACH MOTEL (insect trap)COMPUTERLAND (computer store) CITIBANK (urban bank)INTELLIGENT (vehicle tires) CHEW ‘N CLEAN (dentrifice)JOY (detergent) HULA HOOP (plastic hoops)

Good Rule of Thumb: The more creative or abstract, the more likely to be suggestive and not descriptive


The Draft – Not All Brands Are Created Equal

• Public policy behind descriptive marks/generic terms

– Competitors need ability to describe their products/services

• Risks of descriptive marks

– Competitors use same or similar terms to describe their products/services and dilute your marketing message

– Limited ability to enforce unless acquire secondary meaning

– Could spend more resources enforcing/protecting the mark than actually spend on branding


The Risks of Choosing a Descriptive or Weak Brand

Trademark Registration May Not Be Immediately Granted if the Mark is Descriptive• Must satisfy higher burden to Trademark Office (usually

requires showing 5 years of use in the U.S.; even harder in Europe)

• In the interim, someone else may begin using your brand

Scope of Protection May be Narrow if the Mark is Weak• If in a crowded field of similar marks• If the mark is borderline descriptive


The Draft

Where Do Your Proposed New Brands Fall?

Brands Fall?DWARF for beerSASQUATCH for beerCANADIAN MAPLE flavor of beerALASKAN JUNIPER flavor of beer


The Draft: Is the Brand Protectable?

ArbitraryFancifulSuggestiveDescriptiveGeneric

Avoid WE WANT THESE!!

No Protection

Capable of Eventually Becoming Protectable

InherentlyProtectable

DWARFSASQUATCHALASKAN JUNIPER

CANADIAN MAPLE

Product = Beer


The Draft: Relative Strength of a Mark

• Is it like this?

• Or this?

• Or this?

• If you are the only one you may have strong rights

• Could be dangerous if you are the junior user

• Safety in numbers, but there could be territorial battles and likely a weak mark


Training Camp – Set Up Protocol

Set up a protocol to keep business team happy



• A clear protocol can help avoid issues

• Clearance process should empower marketing/business team and not leave them feeling on the sidelines

• Set a time frame for searching/clearance so can manage marketing/business team's expectations

• Set budget for clearance (and obtaining registration)?



• Get marketing/business team to “buy in” to strong marks

• Meet with marketing/business team regularly to:

- understand product launches

- game plans for the year


Training Camp – Questions to ask your team before searching

• Is this a new mark or a variation of an existing mark?

• What is the meaning/origin for choosing the mark?

• Is the mark based on someone else’s mark?

• When is product launch? Has it occurred already?

• Are there any logos or distinctive stylizations?

• Are there any alternate marks being considered?

• Any unique trade dress to consider protecting?


Training Camp – Questions to ask your team before searching

• What are the products/services?

–Are there product/service extension opportunities?

–Are there any ancillary products/services to consider?

–What are future plans for the brand?

• What countries are you targeting with your brand?


Your PlaybookTypical steps in protocol

• Marketing/business team develops marks

• PR Issues?

• Is it protectable?

• Is it available?

– Knock out search on USPTO website/other TM offices

– Is domain name available?

– Further searching

• In-house search?

• Full search?

• Foreign search?

• If mark is clear, implement registration process


Key Equipment

• TM office websites

– http://tess2.uspto.gov/bin/gate.exe?f=tess&state=4804:g2z8gq.1.1

– http://ttabvue.uspto.gov/ttabvue/

• Madrid database -http://www.wipo.int/madrid/en/services/madrid_ express.htm

• OHIM (EU) TMview – free and covers most of Europe

http://tmview.europa.eu/tmview/welcome.html

• Canada - http://www.cipo.ic.gc.ca/app/opic-cipo/trdmrks/srch/bscSrch.do?lang=eng

• Pacer (litigation searching)


Key Equipment

Other important websites

• Amazon – check to see if products being sold

• www.archive.org – view what a website previously looked like

• Translations – www.freetranslations.com

• WhoIs – check domain name registration data, when was it registered, when does it expire, who owns it

• Acronym Finder – www.acronymfinder.com


Calling the Right Play

How much searching is enough?

• Budget?

• Where will products be sold?

• Is it a house mark, brand name, or secondary mark?

– MOLSON house mark

– DWARF BEER; SASQUATCH– product name

– ALASKAN JUNIPER, CANADIAN MAPLE - flavors

• Do we need to search for trade dress, logos, tag lines, etc.?


Calling the Right Play • Full search – looks at USPTO and state databases, as well

as unregistered, common law uses

• In-house search – typically just USPTO and state records

• Consider at least in-house worldwide screening search at the outset

• Full search for important marks

• Consider conducting in-use investigations – multiple investigations can be cost prohibitive

• Specialized Searching – e.g., for trade dress (can be more difficult to search in-house) for alcohol products, check COLA records; for entertainment properties, do title search


Calling the Right Play - Don’t Fumble

• Surnames – not registrable on Principal Register without secondary meaning

• Geographic terms considered descriptive

• Geographically misdescriptive marks not registrable

• Translate foreign word marks into English and clear them

• Even full searches have limitations and there are time lags

• Check for words with similar meanings –YETI/ABOMINABLE SNOWMAN


Calling the Right Play - Don’t Fumble

• Does the mark have a negative connotation or slang? In foreign languages?

– Is the use of DWARF as a brand offensive?

– CHEVY NOVA – CHEVY DOESN’T GO

– P&G detergent DREFT was originally “Dreck” which is Yiddish/German for “crap”

– Rolls Royce SILVER SERAPH was originally SILVER MIST but “mist” sounded like German slang for manure

• Consider engaging local expert, especially in China, for localized translations/transliterations

• Register local translations/transliterations - YOWIE in Australia


Safe vs. Risky Plays - What is the risk? • What is risk tolerance of company?

• How deep to search? When to clear a mark?

– Depends on the product

– Depends on the mark (house mark, product mark, feature level mark)

– Depends on the shelf life – part of permanent product line vs. seasonal use

– How easy is it to remove if worst case scenario?

• Online only use could be easy to revise

• Removing mark from product or cover with sticker?

– Is a mark technically ever “clear” or without some risk?

– How much risk is too much risk?

– How comfortable is the business team with damage control?


Safe vs. Risky Plays - What is the risk?

Assessing risk –

• No mark is “risk free”

• Define parameters so legal and marketing/business team are on same page with level of risk – what is low, moderate, high really mean to the company?

• Example

– Low risk of conflict – greater than 75% chance of prevailing in a conflict

– Moderate risk of conflict – 35%-75% chance of prevailing in a conflict

– High risk of conflict – less than 35% chance of prevailing in a conflict



Assessing risk –

• What increases risk?

– Closer the marks

– More distinctive the third party mark

– Closer the goods/services

– Overlap customers

– Overlap channels of trade

– How vigorously third party enforces brand



Assessing risk –

• Cannot always predict how a third party will react

– Some third parties may use objection as a way to get $ - are you a deep pocket?

– Reaction could depend on how visible your use is

– Could there be a bad PR situation?

• Consider risk of reverse confusion


Safe vs. Risky Plays - What is the risk?Search results yield a hit:

• Investigate – if ongoing litigation, be mindful of contacting target directly

– When did use commence?

– On what goods/services?

– What geographic area?

– Still using/abandoned?

– www.archive.org

• If no use, do you get aggressive – file cancellation action early?

– Cut off resumption of use

– Contact to purchase registration?


Audibles – Fixes for Potential Issues

au•di•blen. 1. (in football) an alternative play called by the quarterback

If key domain name registered:• Is it in use or parked?

- Order snapback?- Purchase anonymously

• What alternate domain names can you pursue?- For beer: ____beer.com- For beverage: drink____.com- For products/clothing: shop____.com


Audibles –Fixes for Potential Issues

• Would a tweak of the mark or addition of house mark or other elements mitigate risk to an acceptable level?

• Consider limitations to the use and/or goods and services to cover under trademark filings

• Consider purchasing prior rights

• Time permitting, utilize building block approach to increase fence of protection around the brand

• Consider different branding in different jurisdictions (many times, not ideal, however)


Avoiding Penalties

Silly mistakes to avoid


Illegal Procedure – Not Enough Searching

Don’t just search where product will be sold. Also --

• Search where products will be manufactured

• Search where potential infringements can occur

• These should be key target jurisdictions for registration as well


False Start – Proceeding Without a Knock Out

Knock out search –

• Can be done quickly and cheaply to avoid spending money when could easily know of issue

– Don’t just check identical mark

• DWARF

• DWARVES

• LITTLE PEOPLE

– If knock out is clear, don’t stop there


Illegal Substitution

• Marketing/business team should notify legal:

– If change mark

– If change products or services

• DWARF tequila?

– If change territory

• Consider new searches


Personal Foul

• Don’t use own mark as descriptive term on webpage or Wikipedia

• Don’t tout functional elements on collateral or in utility patents for any design for which you would like to seek trade dress protection or for any colors that you would like to try to protect

• Coach business team to use marks in a manner that would be sufficient to perfect registration


Bad Coaching• An abandoned or cancelled mark could still be in use

• Not checking for common law uses as they could limit rights

• For marks which are closer to the line of descriptiveness, not checking to see how PTO handles the term

– Will the PTO require a disclaimer?

• Not checking to see if there have been any oppositions or cancellations filed by third parties? Lit search?

– Are there any litigious parties or those that vigorously enforce their brands?

– CHAMPAGNE; GALLO; ARMOUR

• Registering a company with the Secretary of State does not mean you are free to use the company name as a mark


Bad Coaching• Not ordering watch service as soon as file – for

important marks

– Ideally obtain application and publication watch

– Consider domain name watch

• Not grabbing relevant domain names prior to or as soon as file for mark

• Not digging in

– Logo/design mark

• Who came up with it?

• Do we need an assignment?

• Can we file for copyright?


Things that will get you benched

• Delay of game: Taking too long to clear a mark

• Saying everything has unacceptable “risk”

• Not giving clear guidance on availability and registrability

– Give suggestions if there is an alternate available –can a slight tweak alleviate a conflict?

– Take the time to explain issues or why mark is not clear


STATEGIC PLAYS = TOUCHDOWN!

QUESTIONS?

Stephen Coates [email protected] Natland [email protected] 949-760-0404Jonathan Hyman [email protected] 310-551-3450

Documents

Silver Linings Playbook: Best Practices in Trademark ... · Silver Linings Playbook: Best Practices in Trademark Clearance & Selection ... Slogan (large bottle): ... • Translate