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Presenting a live 90‐minute webinar with interactive Q&A
Trademark Clearance OpinionsAnalyzing Search Reports, Overcoming Clearance Challenges, and Crafting Opinions
T d ’ f l f
1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific
WEDNESDAY, OCTOBER 5, 2011
Today’s faculty features:
Stephen R. Baird, Shareholder, Winthrop & Weinstine, Minneapolis
Susan Upton Douglass, Partner, Fross Zelnick Lehrman & Zissu, New York
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Trademark Clearance Opinions:Trademark Clearance Opinions: Analyzing Search Reports,
Overcoming Clearance Challenges, and Crafting Opinionsand Crafting Opinions
Strafford Publications WebinarOctober 5 2011October 5, 2011
Stephen R. BairdChair Intellectual Property andChair, Intellectual Property and
Trademark & Brand Management Winthrop & Weinstine, P.A.
(612) 604 6585(612) [email protected]
What We Will Cover
• No Legal Duty to Search TechnicallyNo Legal Duty to Search, Technically• Some Trademark Clearance Nightmares• Reasons Behind & Timing of Searchingg g• Reviewing and Analyzing the Search Report• Strategies for Dealing With Blocking References• Providing Opinions Based on Search Reports• Reasons Behind Issuing a Trademark Opinion
Oth P ti P i t & B t P ti• Other Practice Pointers & Best Practices
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No Legal Obligation to Search
There is No Legal Duty to Search:
• Rosso & Mastracco, Inc. v. Giant Food, Inc. 720 F.2d 1263, 1266 (Fed. Cir. 1983).
• Money Store v. Harriscorp Finance, Inc., 689 F.2d 666, 671 (7th Cir. 1982).)
• V&V Food Products, Inc. v. Cacique Cheese Co., Inc., 683 F. Supp. 662, 666 (N.D. Ill. 1988).666 (N.D. Ill. 1988).
• Nabisco, Inc. v. PF Brands, Inc., 1981 F.3d 208, 226 (2nd Cir. 1999).
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No Legal Obligation to Search
No Legal Duty to Search:B t SBut See:• Int’l Star Class Yacht Racing Ass’n v. Tommy Hilfiger U.S.A., Inc., 1995
WL 241875 (S.D.N.Y. 1995) aff’d in part, vacated in part, 80 F.3d 749, 38 U.S.P.Q.2d 1369 (2nd Cir. 1996), remanded, 959 F. Supp. 623, 42 U.S.P.Q.2d 1602 (S.D.N.Y 1997), reconsideration denied, 1997 WL 297031 (S.D.N.Y. 1997), aff’d in part, vacated in part, 146 F.3d 66, 46 U S P Q 2d 1942 (2nd Ci 1998) ff’d 205 F 3d 1323 (2nd Ci 2000) tU.S.P.Q.2d 1942 (2nd Cir. 1998), aff’d, 205 F.3d 1323 (2nd Cir. 2000), cert. denied, 531 U.S. 873 (2000).
• Hilfiger litigation generated four published and two unpublished decisions.• Knock-out search characterized as “minimal effort” and “willful ignorance.”• Failure to follow advice of counsel to conduct full search problematic.
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• Second remand found Hilfiger intended “decoration” not trademark use, and full search was recommended only if trademark use planned.
Trademark Clearance Nightmare
• Sands, Taylor & Wood Co. v. The Quaker Oats Company, 18 U.S.P.Q.2d 1457 (N.D. Ill. 1990), aff’d in part, rev’d in part, 978 F.2d 947, 241457 (N.D. Ill. 1990), aff d in part, rev d in part, 978 F.2d 947, 24 U.S.P.Q.2d 1001 (7th Cir. 1992), cert. denied, 507 U.S. 1042 (1993), remanded, 1993 WL 204093 (N.D. Ill. 1993), aff’d in part, rev’d in part, 34 F.3d 1340, 32 U.S.P.Q.2d 1065 (7th Cir. 1994), reh’g in part, 44 F.3d 579, 33 U.S.P.Q.2d 1543 (7th Cir. 1995), remanded 1995 WL 221871 (N.D. Ill. 1995).
• 11th hour search, calls by in-house legal assistant; no use.• Gatorade’s actions amounted to “callous indifference.”• Having “access to every imaginable resource to avoid the
slightest possibility of confusion” was problematic.• Need to explain clearance to avoid inference of bad faith
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• Need to explain clearance to avoid inference of bad faith.
Other Trademark Clearance Nightmaresg
• Zazu Designs v. L’Oreal, S.A., 9 U.S.P.Q.2d 1972 (N.D. Ill. 1988) rev’d 979 F 2d 499 24 U S P Q 2d 1828 (7th Cir1988), rev d 979 F.2d 499, 24 U.S.P.Q.2d 1828 (7th Cir. 1992) ($2.1M awarded to plaintiff, but reversed on appeal).
• SecuraComm Consulting, Inc. v. Securacom, Inc., 166 F.3d g182, 49 U.S.P.Q.2d 1444 (3rd Cir. 1999) (treble damages and “exceptional case” awarding attorneys fees).
• Trovan Limited v Pfizer Inc 2000 WL 709149 (C D Cal• Trovan Limited v. Pfizer, Inc., 2000 WL 709149 (C.D. Cal. 2000), aff’d, 2004 WL 1859900 (9th Cir. 2004) (affirmed summary judgment to Pfizer, reversing judgment of $143M).
• Attrezzi, LLC v. Maytag Corp., 436 F.3d 32, 77 U.S.P.Q.2d 1641 (1st Cir. 2006) (double damages and attorneys fees).Avoid common themes to avoid similar clearance nightmares
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• Avoid common themes to avoid similar clearance nightmares.
The Reasons Behind Searching
• Knowledge is Power• Obtain Valuable Information for Business
D t i A il bilit f U• Determine Availability for Use• Determine Ability to Register• Determine Strength & Scope of Protection• Determine Strength & Scope of Protection• Helps Client Understand and Accept Reasonable Risks• Helps Client Plan for Contingenciesp g
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The Other Reasons Behind Searchingg
• Avoid Disputes with Third Parties• Avoid Loss of Investment
A id D A d• Avoid Damage Awards• Avoid Lost Profit Awards• Avoid Attorney’s Fee Awards• Avoid Attorney s Fee Awards• A Favorable Cost Benefit Analysis• Pay a Little Now, or Much More Latery ,
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The Timing of Searching
Knowing When to Search:Knowing When to Search:
• Before Adoption and First Usep• Before Brand Extensions• Before Licensing to Others• Before Modernizing or Modifying Mark• Before Expanding Geographically, if No Federal Registration
was Obtainedwas Obtained• Before Extending Use Outside U.S.• Repeat, if No Intent to-Use Application Filed Promptly
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Repeat, if No Intent to Use Application Filed Promptly
The Kinds of Searchingg
• Preliminary Knock-Out Searches•In-house paralegal run•Outside counsel run•Other Methods (Branding & Naming Firms)( g g )
• Full Comprehensive SearchesC h•Corsearch
•CSC (purchased NameProtect)•Government Liason Services•Thomson & Thomson•Other More Recent Online Vendors
14• Supplemental Searches and/or Investigations
Trademark Clearance Opinions: Analyzing Search Reports,
Overcoming Clearance Challenges,Overcoming Clearance Challenges, and Crafting Opinions
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October 5, 2011Susan Upton Douglass
© 2011 Fross Zelnick Lehrman & Zissu
Strategies for Dealing with Blocking Marks
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Reviewing the Search Report
• Identical marks are always a serious risk• Strength of the mark diluted or common• Strength of the mark – diluted or common
terms provide more leeway• Consider whether the mark is unusual or• Consider whether the mark is unusual or
coined• Foreign equivalents• Foreign equivalents• Trade channels
S hi ti ti f th l t17
• Sophistication of the relevant consumers
Evaluating the References
• Federal references are generally of greater concern and carry more weight in courtconcern, and carry more weight in court
• Don’t discount state registrations or common law uses e g Attrezzi and Zazucommon law uses – e.g., Attrezzi and ZazucasesC id hi f i d• Consider geographic scope of prior user and the client’s intended use
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Common Law References
• Don’t be lulled into false sense of security by multiple referencesby multiple references
• Evaluate goods v. services – overlap in subject matter can cause problemssubject matter can cause problems
• Investigate, but how many and which ones?
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Domain and Web References
• A domain name but no relevant content is not a problem (except that your client can’t p ( p yhave the desired domain name)
• Check out the sites independently; p y;sometimes the site is down when the report is prepared
• Web references with the same mark and goods are a problem
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Reverse Confusion
• Don’t overlook the little guys – this can have huge financial consequenceshave huge financial consequences
• Best strategy for a dead hit: approach the owner and try to buy them out or get aowner and try to buy them out or get a consentA l ll l l l l ill• Any sales, even on a small, local level, will suffice to maintain trademark rights
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Strategies for Marks on the FederalStrategies for Marks on the Federal Register
• Look at the date – is it up for Sec. 8 or renewal? Is the mark likely to be in use?y
• Look at the prosecution history. Were there refusals based on 2(e) or 2(d)? Did the ( ) ( )owner make helpful admissions?
• Run a Google search and see if there is ghelpful information about customers or limited scope of use.
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Look for Overbroad Claims
• Look at the entire listing of goods or services. Is it plausible?p
• Use-based applications require the mark to be in use for all goods/services listed.g
• Even 1(b), 44 and Madrid filings must be realistic, as they include a declaration of , yintent to use the mark for all goods/services listed.
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ENAMORADA [translated as “a woman who is in love”]ENAMORADA [translated as a woman who is in love ]
PERFUMES; FRAGRANCES FOR PERSONAL USE; TOILET WATERS; COLOGNES SKIN CARE PREPARATIONS NAMELY LOTIONS HANDCOLOGNES; SKIN CARE PREPARATIONS; NAMELY, LOTIONS, HAND CREAMS, MOISTURIZERS, TONERS AND BODY OILS; SHAVE GEL; NON-MEDICATED LIP BALMS; HAIR CARE PRODUCTS; NAMELY, SHAMPOOS, CONDITIONERS SPRAY AND SCULPTING GELS HAIR COLORINGCONDITIONERS, SPRAY AND SCULPTING GELS, HAIR COLORING PREPARATIONS AND WAVING LOTIONS; MAKEUP; NAMELY, LIPSTICK, LIP GLOSS, EYE SHADOW, FOUNDATION CREAM, BLUSHES, FACE POWDER, EYE PENCILS, LIP PENCILS, NAIL POLISHES, NAIL POLISH REMOVERS ANDEYE PENCILS, LIP PENCILS, NAIL POLISHES, NAIL POLISH REMOVERS AND MASCARA; FABRIC SOFTENER; DETERGENT FOR LAUNDRY, HOUSEHOLD AND INSTITUTIONAL USE; BEAUTY BAR SOAP; DEODORANT AND ANTIPERSPIRANT; SUN CARE PREPARATIONS; NAMELY, SUNSCREEN AND SUN BLOCK PREPARATIONSBasis: 1(a)
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Specimens May Provide a Basis forSpecimens May Provide a Basis for Challenging a Blocking Mark
• Look at the specimen of use. It may provide clues as to the nature and scope ofprovide clues as to the nature and scope of use, and other possible limitations.
• The specimen may show the distributor’s• The specimen may show the distributor s name or the website for additional clues.Th i h th t th d t i• The specimen may show that the product is not real.
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Investigations
• You can make a call to find general information available to the public, or make p ,an inquiry through the website.
• Use a private investigator for ITU or foreign p g gmarks, or for more reliable information, or if testimony will be needed.
• In NY, conversations may be recorded and used as evidence.
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Consider the Risk Factors
• Client has no imminent plans to use the mark allows for greater risk-takingg g
• Limited market exposure in terms of time or geographical distributiong g p
• Use limited to promotional materials• Consider using but not registering to lowerConsider using but not registering to lower
exposure• Is the owner of the blocking mark litigious?
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Is the owner of the blocking mark litigious?
Consider the Market Factors
• Certain industries such as pharmaceutical tend to be more protectivep
• Major companies may trade consents for worldwide coexistence
• Cosmetics companies tend not to enforce shade names
• Band names and record labels often coexist• Consider real world v. PTO issues
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Consider real world v. PTO issues
Providing a Written Opinion
• Explain the risks in writing so that the advice will reach the marketing groupg g p
• Can be more nuanced if in writing, and more easily communicatedy
• Suggest ways of circumventing the problem – e.g., adding a house mark or a designg , g g
• Attorney-client privilege attaches to the opinion, but not the data
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p ,
Next Steps
• Contact the owner and alert them to the problem, or hope they don’t notice or care?p y
• Contact the company directly, or its attorney?• File a cancellation action, or take a wait-and-see ,
approach?• Negotiate coexistence or an assignment?g g• If the owner of the blocking mark says no, be
prepared to select another mark.
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Sometimes you just have to saySometimes you just have to say no and move on!
Thank you for your attention.y y
S U t D lSusan Upton DouglassFross Zelnick Lehrman & ZissuNew York
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Preparing the Trademark Opinion
• Weighing Risks v. DecisivenessAtt h R li d U S h R t• Attach Relied-Upon Search Report
• Discuss Most Pertinent References• State Conclusion & Explain Bases• State Conclusion & Explain Bases• Avoid the Standard Disclaimers• Explain General Caveats Elsewherep• Avoid Gratuitous Recommendations• Explain Use v. Registration• Note Section 18 Relief if Appropriate• Assume the Opinion Will be Produced
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The Reasons Behind Issuing Trademark Opinionsp
• To Clearly Convey Important Information & Legal AdviceI t d d f B i t R l O i i f C l• Intended for Business to Rely on Opinion of Counsel
• Desire to Neutralize Intent Factor in Likelihood of Confusion• Insulate Against Charge of Bad Faith & Willful Infringement• Insulate Against Charge of Bad Faith & Willful Infringement• To Deliver Value to the Client• I Told You So (Defensive for Benefit of Attorney)( y)• Other Reasons
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Junior User’s Intent
There is No Good Faith Defense to Infringement:
“Use of a designation likely to cause confusion is anUse of a designation likely to cause confusion…is an infringement regardless of whether the actor knows of the other’s prior use or intends to confuse prospective
h ’ ”purchaser’s.”
RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 22 comment b, p. 246 (1995).
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Junior User’s Intent
Mostly inferences, but sometimes presumptions found:
“Logic requires that from such intentional copying arises a presumption that the newcomer is successful and there is apresumption that the newcomer is successful and there is a likelihood of confusion. It would be inconsistent not to require one who tries to deceive customers to prove they have not been deceived ”deceived.
Ossem Food Indus. Ltd. V. Sherwood Foods, Inc., 917 F.2d 161, 16 U.S.P.Q.2d 1646, 1649 (4th Cir. 1990).
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Providing Trademark Clearance Opinionsp
Important Considerations in Providing Trademark Opinions:
• Oral v. Written Opinions• The Contents of a Trademark Opinionp• Reflect on the Purpose of the Opinion• Reflect on Who Should Benefit from the Opinion• Consider Limited Waiver of Attorney-Client Privilege• Consider Limited Waiver of Attorney-Client Privilege• Do Circumstances Call for Non-infringement Opinion?
– Circumstances That Focus on One Reference in SearchI t f C d t th t Mi ht b T i t d i t A t l C f i E id– Instances of Conduct that Might be Twisted into Actual Confusion Evidence
– Prior History With Litigious Adversary– Prior Contact/Relationship With Trademark Owner
USPTO 2(d) R f l B d Cit d M k
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– USPTO 2(d) Refusal Based on Cited Mark– Demand Letter Received Relying on Cited Mark
Providing Trademark Clearance Opinions: The Intent Factorp
• Mere knowledge is not evilI t t t f B d f ith• Intent to confuse = Bad faith
• May infer likelihood of confusion• Assume intentional infringer succeeds• Assume intentional infringer succeeds• Not determinative, but highly charged• Intent to copy, begs question of whether it’s protectablepy, g q p• Intent to compete is OK• Reverse confusion treatment of intent• Opinions can be wrong, and they are not a defense to
infringement/dilution
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Providing Trademark Clearance Opinionsp
• Beware of opinions that may be rejected to show good faith when they contain no analysiswhen they contain no analysis.
Bear U.S.A. Inc. v. A.J. Sheepskin Leather Outwear, Inc., 38 U.S.P.Q. 1640, 1649 (S.D.N.Y. 1995).
• Reasonable good faith reliance on opinion of counsel doesn’t mean there is no infringement or likelihood of confusionmean there is no infringement or likelihood of confusion.
Dreamworks Production Group, Inc. SK6 Studio, 142 F.3d 1127 (9th
Cir. 1997).
• Opinion of counsel must be thorough enough to justify good faith belief of junior user that it wouldn’t infringe
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faith belief of junior user that it wouldn t infringe.Trovan Ltd. V. Pfizer, Inc., 2000 WL 709149 (C.D. Cal. 2000).
Other Practice Pointers & Best Practices
• Identical marks are red flagsA id itt d ti th t ’t b f ll d• Avoid written recommendations that won’t be followed
• Adding house marks and design features to mitigate risk• Treatment of intent to use references• Treatment of intent-to-use references• Difficulty concerning non-traditional trademarks• Continued use after receipt of demand letterp• Federal dilution claims and State dilution claims• Record disclaimers and caveats in another document• Write a definitive opinion and explain bases of conclusion• Estimated likelihood of success problematic
B tt th 50% i ll b tt th fli i i
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– Better than 50% is really no better than flipping a coin.
Thank you!
Stephen R. BairdChair, Intellectual
P t d T d kProperty and Trademark Brand Management
Winthrop & WeinstineWinthrop & Weinstine, P.A.
(612) 604-6585( )[email protected]
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