Intellectual Property and
Trademark Enforcement
Melissa H. Gray
Intellectual Property
Trademarks
 Any word, logo, slogan, sound, color, or other
identifying symbol used on goods or in connection
with services to identify their source
Unique Marks
Trademarks
Symbols
 SM – service mark
 TM – trademark
 ® – registered trademark
 © – registered copyright
Trade Secrets
Information, including a formula, pattern, compilation,
program, device, method, technique, process, financial data,
or list of actual or potential customers or suppliers that:
 (A) derives independent economic value, actual or
potential, from not being generally known to, and not
being readily ascertainable by proper means by, other
persons who can obtain economic value from its disclosure
or use; and
 (B) is the subject of efforts that are reasonable under the
circumstances to maintain its secrecy
Examples
Patents
Any new, nonobvious, and useful:
 Process
 Machine
 Manufacture
 Composition of matter
 Asexually reproduced plant
Right to exclude others from practicing the invention
 Duration: 20 years (utility); 15 years* (design)
*As of May 13, 2015
Common IP Myths
“I thought of this, so I own it.” ~Potential Client
Patent

I can patent this idea
Copyright

You need to register your work before copyright applies

If there’s no copyright notice, it’s not protected

If I credit the owner, I don’t infringe
 If I found it online, copyright does not apply
Trademark

We registered the domain name, so we own the trademark

We own a trademark so no one can use our trademark for anything—ever
Trademark Process
Choose a Mark
SEARCH!
Application
and Use
Enforcement
Maintenance
Choosing The Right Mark
 Client’s key objective: avoid marks that describe its
product or service or where they are from
 Example of descriptive mark: COMFORT-STRETCH™ for active
wear
 Descriptive marks are more difficult to register and stop
competitors from using
 all traders should be free to use words that describe their
products/services
 advertising people prefer descriptive marks because they
send a message about the product or service
 they advertise
Fanciful/Arbitrary Marks
 Invented words that say nothing about the product/service
are the strongest marks
 example: LYCRA®, EXXON®, KODAK®, XEROX® GOOGLE®
 Invented words enjoy a wider ambit of protection and are
easier to protect
 competitors have no good reason to come close to an
invented mark
 But businesses are reluctant to choose an invented word
 more effort is required to explain the use and benefits of the
product/service
Suggestive Marks
 Can be "suggestive" of product/service’s qualities without
being descriptive
 Alternative to invented word: a dictionary word that is
unrelated to your product/service
 e.g. JAGUAR® for cars; PENGUIN® for books
 Another alternative: combine parts of two words to create
a new word
 example: MICROSOFT®, COMPUSERVE®
 Another option: your “house mark”plus another word(s)
that is generic/in common use
 e.g.: Microsoft E-mail
Marks to Avoid
 Avoid marks that are surnames or full names
 such marks must be used a lot before you can claim them for yourself
 still, personal names are popular
 e.g. DUPONT™, MCDONALDS®
 Avoid marks that are composed of initials
 example: IBM®, BMW®
 these types of marks have narrow protection (competitors can come
closer to them without infringing)
 Avoid marks that have undesirable connotations in other
languages
 NOVA® (for cars) means "no go" in Spanish
Trademark Clearance Searching
How Much is Enough?
Highlights
 Trademark searching




Why search?
Dangers of no search or insufficient search
Attorney liability
Practical advice
Question for the Audience:
Do you have a duty to search prior
to using or filing a trademark?
NO!
BUT DO IT ANYWAY!
No Duty
 Seeking forgiveness vs. asking permission*
 No federal or PTO requirement to search before use
or attempt to register
 But serious consequences may arise for client and
attorney for failing to search adequately first
 Relevant to the analysis of adoption in bad faith
(attorneys’ fees)
Benefits of Searching
 Avoid wasting time and money responding to examiner rejection
or opposition
 Avoid lawsuits and big $$$ damages
 Typically, exposure is cost of phasing out new mark + profits
earned by its use (or damages aggrieved party has suffered) +
legal costs + a portion of aggrieved party’s legal costs
 aggrieved party can possibly get all its legal costs
 not unusual for aggrieved party to accept phase-out of problematic mark
(without payment of damages)
 but a phase-out can still be expensive
 For important marks that would be expensive to phase out,
search more thoroughly
Search Options
 Free Searching
 U.S. Trademark Office offers free search system for searching
trademarks (Trademark Electronic Search System (TESS) available
at http://tess2.uspto.gov/)
 Preliminary/Knock Out Search
 Federal and relevant state registries on databases
 Full Search






Federal and State Registries
Common Law Usage
Domain Names
Business Names
Social Media Accounts
Investigation Following Search
Limitations






Full searches and investigations cost more
Time consuming
Attorney’s judgment on similarity of marks and goods
International filings
Ultimately a question of risk tolerance
No search is full proof
Where Can I Search For Free?
Conducting a free search and limitations: USPTO.gov*
CAUTION!
 Search “BLUE RAY” 25 records
 Search “BLUERAY” 7 records
 Search “PILLOW PET” 32 records
 Search “PILLOWPET” 0 records
 LIMITATIONS
 Doesn’t always catch phonetic, spelling, and plural variations
 TIPS
 Use *
 Always use two words instead of one
Other Search Options
 GOOGLE®
 Corsearch®
 Thompson Reuters™
Dangers of Failure to Search
 Sands, Taylor & Wood v. Quaker Oats Co.,1990 WL 251914 (N.D. Ill.
1990)
 Quaker Oats didn’t search before use
 Trial court said it had duty to do so
 After numerous appeals $26.5 million in damages, affirmed
attorney’s fees award
 International Star Class Yacht Racing Ass’n v. Tommy Hilfiger
U.S.A., Inc., 80 F.3d 749 (2nd Cir. 1996)
 Suggested that full searches were necessary
 Not limited to national sales campaigns
 Defendant ignored attorney’s advice to search
Ethics and Liability
 No federal or PTO requirement for attorney to search
before filing application to register
 But duty to represent client competently
 37 CFR 10.76
 TDRPC 1.01
 Malpractice
 Typically in state court
So how do you protect clients and
avoid malpractice?
 Best practice
 Conduct full comprehensive search and investigation
 Render opinion to client in writing
 Issue of negative search results
 Explain limitations of search in writing
 Especially important for national ad campaigns and large companies
 If client does not want to spend money on comprehensive search




Conduct search of federal and state registries
Render opinion to client in writing
Explain limitations of search
Better for one time ad runs, weak marks, small local businesses
 If client does not want any search
 Explain risks to client, in writing, and have client sign waiver
Filing Trademark Applications
Trademark Registration
The Application Process
 Process takes anywhere from 12-18 months in most
cases
 Expediting available in limited instances
 Petition to Make Special
 Use this form to petition to expedite initial examination
of an application. A petition fee ($100) is required.
Petitions to make special are granted when there is the
existence of actual or threatened infringement, pending
litigation, or the need for a registration as a basis for
securing a foreign registration. See TMEP §1710 et seq.
Office Actions
 Office Actions- 6 months to respond




 Most responses to Office actions (official letters) must be received
within 6 months from the mailing date on the Office action. In certain
circumstances, the Office action will specify a different response period.
There are no extensions to the deadline specified in the letter.
Examining attorneys have no discretion to extend the time period for
filing a response. If applicants do not submit a timely response to an
Office action, their applications will be declared abandoned.
2(d)-likelihood of confusion
G&S Amendments
Disclaimers
Principal vs. Supplemental Register
Supplemental Register
 The registrant may use the registration symbol ®;
 The registration is protected against registration of a confusingly
similar mark under Trademark Act Section 2(d);
 The registrant may bring suit for infringement in federal court;
and
 The registration may serve as the basis for a filing in a foreign
country under the Paris Convention and other international
agreements
 After the mark has been in use for over 5 years, an applicant may
reapply for registration on the Principal Register
 No statutory damages
Maintenance
 Use it, or Lose it.
 Excusable Non-Use—must be temporary, and the owner
must clearly demonstrate how the circumstances
prevent use of the mark in commerce and what efforts
are being made to resume use. Please note that nonuse
due to the decreased demand for a product does not by
itself constitute "excusable nonuse.”
 See TMEP §1604.11
Declaration of Use and/or Excusable
Nonuse of a Mark
 Section 8
 You must file a Section 8 declaration, specimen, and
fee on a date that falls on or between the fifth (5th)
and sixth (6th) anniversaries of the registration (or,
for an extra fee of $100.00 per class, you may file
within the six-month grace period following the sixth
(6th) anniversary date).
 FAILURE TO FILE A SECTION 8 DECLARATION WILL
RESULT IN CANCELLATION OF THE REGISTRATION.
Declaration of Incontestability
 Section 15
 To claim that a mark registered on the Principal Register is now
incontestable, you must file a Section 15 declaration once the
mark has been in continuous use in commerce for a period of
five (5) years after the date of registration, or date of publication
under § 12(c), and the mark is still in use in commerce.
 Section 15 does NOT apply to marks on the Supplemental
Register.
 You may file this declaration within one (1) year after the
expiration of either any five-year period of continuous use
following registration, or any five-year period of continuous use
after publication under § 12(c).
Renewals
 Sections 8 & 15
 May be filed as a Combined Declaration of Use &
Incontestability under Sections 8 & 15 only if you have
continuously used a mark registered on the Principal (not
Supplemental) Register in commerce for five (5)
consecutive years after the date of registration
 Filing falls on or between the fifth (5th) and sixth (6th)
anniversaries of the registration (or, for an extra fee of
$100.00 per class, you may file within the six-month grace
period following the sixth anniversary date)
Renewals Cont.
 Section 9
 The owner must file a Declaration of Use (or
Excusable Nonuse) and an Application for Renewal
between the 9th and 10th years after the registration
date, and between every 9th and 10th year after the
registration date thereafter. See 15 U.S.C. § 1059.
 Combined Sections 8 & 9 (Combined Declaration of
Use and/or Excusable Nonuse/Application for
Renewal)
Common Law Rights
Enforcement
Client finds a problem, what next?
 Do a complete investigation of the problematic use
and strength of claims
 Notify the wrongdoer of the problem in an
appropriate manner
 Follow up until a resolution is reached by the parties
DuPont Factors
We determine likelihood of confusion by focusing on the question whether the purchasing public would mistakenly
assume that the applicant's goods originate from the same source as, or are associated with, the goods in the cited
registrations. [citation]. We make that determination on a case-by-case basis, [citation], aided by the application of the
factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Those factors are:

1.
The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and
commercial impression.

2.
The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in
connection with which a prior mark is in use.

3.
The similarity or dissimilarity of established, likely-to-continue trade channels.

4.
The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated
purchasing.

5.
The fame of the prior mark.

6.
The number and nature of similar marks in use on similar goods.

7.
The nature and extent of any actual confusion.

8.
The length of time during and the conditions under which there has been concurrent use without evidence of
actual confusion.

9.
The variety of goods on which a mark is or is not used.

10.
The market interface between the applicant and the owner of a prior mark.

11.
The extent to which applicant has a right to exclude others from use of its mark on its goods.

12.
The extent of potential confusion.

13.
Any other established fact probative of the effect of use.
Id. at 1361, 177 USPQ at 567
 Not all of the DuPont factors may be relevant or of
equal weight in a given case, and "any one of the
factors may control a particular case," In re Dixie
Rests., Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531,
1533 (Fed. Cir. 1997).
What Do You Think?
Adidas
Payless
What Do You Think?
Converse Chuck Taylor All Star
Ralph Lauren “Ranell”
What Do You Think?
Deadmau5 vs. Mickey Mouse
Colgate v. Aquafresh
What Do You Think?
Marijuana Candy vs. Regular
Candy
Costco v. Tiffany
Stopping Infringers
 If businesses use marks/names similar or identical to a
client’s, over time the mark/name is at risk of:
 being significantly limited in its scope of protection
 being declared invalid for non-distinctiveness
 To avoid this, seek out users of, and applicants for
marks/names that are confusingly similar
 stop use of similar mark/name or grant user a license
 oppose applications for similar marks
Cease and Desist Letters
Purposes of Cease and Desist Letters
 Tell alleged infringer to cease causing harm
 Strike fear in recipient so they will stop
 Start the clock on “willful” infringement
 Possibly increase potential damages
It’s Just a Letter
A cease and desist is not legally binding
 It is simply an attorney’s (often very onside) opinion
of the law
A cease and desist is not a lawsuit
 It should still be taken seriously, but more often than
not, a cease and desist letter does not result in
litigation
Best Practices
1. Research the individual or company to whom you
plan to send a cease and desist notice. Are you dealing
with a fan? Well-meaning student? Satirist? A competitor
or counterfeiter with bad intentions? Think about how
your proposed notice will be received, and how it would
play out in the press or before a judge. The additional
time researching and writing an appropriate letter is
always well spent. It can help to avoid a PR fiasco, and
in some cases lower the risk that the recipient will file a
preemptive lawsuit.
Best Practices
2. Avoid using form letters or emails for distributing
cease and desist notices. Personalize the letters to fit
the situation and remember your company and
customer’s voice. Use corporate messaging and avoid
coming across as a bully.
Best Practices
3. Use a tone in the notice that is appropriate to the
situation. It should parallel the company’s level of
concern, speak appropriately to the person who will
receive the notice, and accurately reflect the company’s
own public image and values.
Best Practices
4. Polite requests often are more effective than
aggressive cease-and-desist notices. If the situation
involves truly abhorrent behavior by an infringer,
however, then strongly consider having a letter sent by
the company’s outside counsel. Among other
advantages to doing so, this allows the company to
distance itself somewhat from any harsh tone
necessarily included in the cease and desist notice.
Best Practices
5. Keep in mind that a cease-and-desist notice is almost
never confidential or privileged. Even if you label the
notice “confidential,” in the freewheeling world of
social media it is likely to end up on the recipient’s blog
or Web site, or in the news.
Softball vs. Hardball
“JDPI is the owner of the JACK DANIEL’S
trademarks (the “Marks”) . . . .”
“It has recently come to our attention that
the cover of your book Broken Piano for
President, bears a design that closely mimics
the style and distinctive elements of the
JACK DANIEL’S trademarks.”
“In order to resolve this matter, because you
are both a Louisville ‘neighbor’ and a fan of
the brand, we simply request that you
change the cover design when the book is reprinted.”
Funny Responses
“Thanks for your letter! I love hearing from and
meeting people from all around the country. . . .
under normal circumstances I would assume you
have a beard . . . I do too! But, since you are a lawyer,
you probably just have some expensive suits
instead.”
“HOPASAURUS REX is a name we give to a process
upon which we apply to a beer and not the beer
itself. Normally I would tell you what this process is,
but I really don’t feel like it anymore since your first
introduction to me wasn’t very nice. Furthermore, I
don’t want you to try to trademark it and sue me
later.”
“In any event, we don’t use HOPASAURUS REX
enough to care about what we call it, so you may
consider this letter to be our complete and total
acquiescence to your demand that we cease and
Cont.
“Please tell [your client] they could
have just asked us nicely and saved
the legal fee. I also request (but
not demand) you please tell them
that I will not be giving them a hug
if I ever meet them.”
“PS: Please enjoy this drawing of a
T-Rex waiving white flags, which
was suggested for inclusion by my
attorney. Actually, he’s just my
friend, I can’t afford his legal fees.”
Other Methods of Enforcement




License
TTAB Proceedings
Federal or State Lawsuit
License
Domain Name Issues
Overview
 The typical scenarios which trigger the desire to
obtain a domain from 3rd party
 Prosecute, Monitor or Recover?
 Legal considerations/methods of recovery
 Acquisition options/methods of recovery
 Determining your “Recovery Strategy”- Business vs.
Legal Decisions
Typical Scenarios






Company Name Change
New Product Release
Merger or Acquisition
Domain Expired and Third Party Acquired
Unauthorized Transfer Occurred
Review/Audit of Portfolio
Tools for Domain Recovery




Cease and desist letter
UDRP or other administrative proceeding
Court remedies – ACPA
Domain Acquisition
UDRP Basics
 UDRP = Uniform Dispute Resolution Policy
 Arbitration proceeding by accredited providers
 E.g. WIPO, NAF, CPR Institute
 NEW - Czech Arbitration Court
 Applies to all gTLDs domains
 Some ccTLDs have adopted the UDRP
 E.g. .ac, .ag, .bs, .cy, .gt, .na, .nu, .tt, .tv, .ws
 Other ccTLDs have implemented their own policies:




CanadianInternetRegistrationAuthority(CIRA)(.ca);.
.eu Alternative Dispute Resolution Rules;
Nominet Dispute Resolution Service (.uk)
Note: see http://www.wipo.int for a listing of dispute resolution policies by ccTLD
UDRP Pros and Cons
 Pros
 No discovery, no personal appearances, no trial – Fees
more predictable than litigation
 Don’t need personal jurisdiction over registrant
 Cons
 No damages available
 Minimum 60 days to decision, sometimes longer
Elements of a UDRP Claim
 Identical or confusingly similar to mark in which
complainant has rights;
 Registrant has no rights or legitimate interests in the
domain name; and
 Domain name was registered and is being used in
“bad faith”
Defenses to UDRP Claim
 Before notice, use in connection with a bona fide
offering of goods or services;
 Commonly known by the domain name; or
 Legitimate non-commercial or fair use, without intent
for commercial gain or to misleadingly divert
consumers or tarnish the mark at issue
ACPA
 ACPA = Anti-cybersquatting Consumer Protection Act
 Section 43(d) of Lanham Act (15 U.S.C.)
 Statutory damages available $1,000 to $100,000 per
domain name
ACPA Pros and Cons
 Pros
 Can recover damages
 Statutory damages available $1,000 to $100,000 per domain
name
 Can seek TRO or preliminary injunction
 Includes dilution
 In rem jurisdiction
 Cons
Unpredictable fees
Generally need personal jurisdiction
ACPA Elements
 Bad faith intent to profit, and
 Register, traffic in or use a domain name that:
 is identical or confusingly similar to a distinctive mark; or
 is identical, confusingly similar or dilutive of a famous
mark
Bad Faith Under ACPA
 Court may consider 9 factors:
1) Plaintiff’s trademark rights
2) Defendant’s name or nickname?
3) Defendant’s prior use for bona fide offering of goods or services
4) Defendant’s bona fide noncommercial use on a website
5) Defendant’s intent to divert consumers either for commercial gain
or with intent to tarnish or disparage the mark or by creating
confusion
6) Defendant’s offer to sell it w/o use or prior conduct indicating a
pattern
7) Provision of false or misleading contact information
8) Registration or acquisition of multiple infringing domain names
9) Extent that the mark is not distinctive and famous
Acquisition Options




Auction
Drop Club/SnapNames
Direct Purchase from Current Owner
Indirect Purchase from Current Owner through 3rd
Party
 NEED FOR SPEED!
Recovery Strategies
 Legal
Risk Analysis – What harm/exposure does not getting
this domain cause?
 Rights Review – what “rights” to the name do you have
and do you meet the requirements for a cause of action
under administrative rules/statute?
 Business
 Businesspurposeofdomain&urgencyofgettingit –
Whatisthebudgettogetthename?
Consequences of Failure to
Properly Use or Enforce Marks
Proper Use of Marks
A
•Adjective
C
•Consistent
I
•Identification or Status
D
•Distinctive
Adjective
Which Column Shows Proper Usage?
Column A






XEROX these copies
a five-KLEENEX movie
Send the FEDEXs
Send it EXPRESS MAIL
I drank four STARBUCKS
Put on your RAY-BANS
Column B
 Use a XEROX brand copier
 Please hand me a KLEENEX
tissue
 Send the packages via FEDEX
courier
 Send the packages via EXPRESS
MAIL service I had four
STARBUCKS lattes
 Put on your RAY-BAN sunglasses
Consistent
 The mark should be represented the same way each
time.
 For example, if a mark is represented in all capital
letters, you should consistently use all capital letters
when referencing that mark. This has the desired
effect of emphasizing that the term is indeed a
trademark or service mark, not merely another word
in the text.
Copyrights
 What can be protected?
 Any work of authorship fixed in a tangible medium
 Examples: works of art, books, computer programs, manuals,
audio-visual works, jewelry, fabric designs, architectural
works
Copyrights
Derivative Works
 A work based upon one or more preexisting works
Copyrights
Work made for hire
 A work prepared by an
employee within the scope
of his or her employment;
or
 A work specially ordered or
commissioned by express
agreement of the parties
Thank you!
Melissa H. Gray
Klemchuk LLP
8150 N. Central Expressway, 10th Floor
Dallas, TX 75038
214-367-6000
Melissa.gray@klemchuck.com