An Introduction to Trademarks & Brand
Protection
Allen M. Lee
A Professional Law Corporation
allen@allenmlee.com
(408) 249-2735
www.allenmlee.com
Copyright © 2012 Allen M. Lee, A Professional Law Corporation
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Topics to be Covered
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Overview of intellectual Property.
Trademarks and other types of marks.
Selecting a mark.
Searching your mark.
Registering your mark.
Proper trademark usage.
Protecting your mark.
Q&A
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What is Intellectual Property?
Intellectual property is “property (as an idea, invention, or process)
that derives from the work of the mind or intellect; also, an
application, right, or registration relating to this.”
Merriam-Webster’s Collegiate Dictionary at 650 (11th ed. 2003).
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What is Intellectual Property?, cont’d.
Federal and state laws recognize property rights in different forms of
information, including
(i) copyright which protects expressive information,
(ii) patent which protects technological information,
(iii) trademark which protects symbolic information, and
(iv) trade secret law which protects proprietary information such as
formulas, patterns, compilations, devices, methods, techniques or
processes.
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Why Should I Care about Trademarks?
Brand Value in 2011 ($M)
1. Apple - $153,285
2. Google - $111,498
3. IBM - $100,849
4. McDonalds - $81,016
5. Microsoft - $78,243
6. Coca-Cola -$73,753
7. AT&T - $69,916
8. Marlboro - $67,522
9. China Mobile - $57,326
10. GE - $50,318
Trademarks often are one of a
company’s most valuable assets.
They help identify and distinguish your
goods or services from others.
They help consumers identify the level
of quality they will receive.
They symbolize the reputation of your
company.
They help create customer loyalty and
influence purchasing decisions.
Allows for the assertion of claims when
others attempt to copy or pass off.
Source: BrandZ.com
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Overview – What is a Mark?
A trademark is a “source identifier.”
Types of Marks:
Trademark
– A trademark is a word, phrase, symbol or design, or a combination thereof,
that identifies and distinguishes the source of the goods of one party from
those of others.
Service mark
– A service mark is a word, phrase, symbol or design, or a combination
thereof, that identifies and distinguishes the source of a service rather than
goods.
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Types of Marks, cont’d.
Certification mark
– A certification mark is any word, phrase, symbol or design, or a combination
thereof owned by one party who certifies the goods and services of others
when they meet certain standards. The owner of the mark exercises control
over the use of the mark; however, because the sole purpose of a
certification mark is to indicate that certain standards have been met, use of
the mark is by others.
Collective mark
– A collective mark is any word, phrase, symbol or design, or a combination
thereof owned by a cooperative, an association, or other collective group or
organization and used by its members to indicate the source of the goods or
services.
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Types of Marks, cont’d.
Phrase: Johnson & Johnson Corporation’s “No More Tears” for
baby shampoo.
Sound: The 3-note chime for NBC for television broadcasting
services, or Sprint’s pin drop for telecommunications services.
Color: The color pink for Owens-Corning’s fiberglass
insulation.
Smell: U.S. Reg. No. 2,463,044 for the scent of cherry used in
connection with automotive lubricant.
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Examples:
SONY
Basic word mark
Stylized word mark
Logo & word mark
Design mark
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Examples:
PEPTO-BISMOL®
COCA-COLA®
BUDWEISER®
WAL-MART®
STARBUCKS®
CNN®
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Types of Marks, cont’d.
Trade Dress.
The trade dress of a product involves the total image of a product
and may include features such as size, shape, color or color
combinations, texture or graphics.
Generally two types:
1) Product packaging/labeling; and
2) Product design (overall configuration/appearance of a product).
(U.S. Reg. No. 1057884, The Coca-Cola Company)
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Special Rules for “Trade Dress”
Must be “non-functional” (e.g. not essential to the use or purpose of the article or
does not affect the cost of quality of the article; no competitive advantage to
design).
Product packaging may be inherently distinctive so secondary meaning not
necessarily required. See Two Pesos, Inc. v. Taco Cabana, 505 U.S. 763 (1992).
Product design/configuration cannot be inherently distinctive. Secondary
meaning always required. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529
U.S. 205 (2000).
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The “Spectrum” of Marks
Some trademarks are stronger and easier to protect than
others. In assessing the strength of a mark, courts recognize
four categories of marks:
Strong (more protection)
Arbitrary/
Fanciful
Marks
Suggestive
Marks
Weak (less protection)
Descriptive
Marks
Generic
Marks
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The “Spectrum” of Marks, cont’d.
Generic Marks
– These are terms that are the common names for a type of product.
– Can never function as a mark.
Examples:
YELLOW PAGES for yellow-colored telephone directory books.
BANKS for banking services.
LOW-CALORIE BEER for beer.
COMPUTER SCREEN WIPES for screen wipes.
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The “Spectrum” of Marks, cont’d.
Descriptive Marks
– Marks that convey an immediate idea of the ingredients, qualities or
characteristics of the goods.
– Protectable only if the mark acquires secondary meaning, i.e., the
consumer learns to associate the mark with a single source.
Examples:
ICE for beer.
BABY BRIE for mini-size brie cheese.
ARTHRITICARE for pain relieving gel for arthritis.
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The “Spectrum” of Marks, cont’d.
Suggestive Marks
– Marks that suggest something about the goods, but require
imagination, thought and perception to reach a conclusion as to the
nature of the goods.
– Inherently distinctive, automatically protectable.
Examples:
CHICKEN OF THE SEA for tuna.
BLISS for beauty salon services.
COPPERTONE for suntan lotion.
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The “Spectrum” of Marks, cont’d.
Arbitrary/Fanciful Marks
These are inherently distinctive. Automatically protectable without secondary
meaning, and are the strongest types of marks.
Arbitrary marks are common words applied in unfamiliar ways.
Examples: CAMELS for cigarettes, APPLE for computers/electronics.
Fanciful marks are coined (made-up) terms with no dictionary meaning.
Examples: EXXON for retail services featuring fuel, KODAK for photographic
films and photographic papers, COCA-COLA for non-alcoholic beverages,
ROLEX for watches.
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Selecting a Trademark
Choose a mark that is arbitrary, fanciful, or suggestive (inherently distinctive).
Choose a mark that is easy to pronounce and remember.
Do not choose a mark that is merely descriptive or generic.
Do not choose a mark that has negative connotations in foreign languages.
Do not choose a mark that may become passé in a few years.
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Searching a Mark
Purpose of a Search
Ferret out potential conflicts.
Provides an idea of the strength/protectability of the mark.
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Searching a Mark
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Scope of Search
U.S. Trademark Register, including pending and previously pending
trademark applications and registrations.
State registrations.
Internet search engines.
Brand magazines/Market directories.
Telephone directory listings.
Domain names.
Online databases and industry publications directed to the goods or
services being searched.
Trade name listings.
Reported decisions.
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Registering your Mark.
Rights arise by use – The “first user” principle.
“Use” of a mark
– Use on goods
– Use with services
So why register?
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Registering your Mark, cont’d.
Federal registration creates certain substantive and procedural
rights.
A registration on the Principal Register is prima facie evidence of
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the validity of the registered mark;
the registration of the mark;
the registrant's ownership of the mark;
the registrant's exclusive right to use the registered mark;
use in interstate commerce prior to registration (for use-based applications);
and
continued use since the filing date of the application.
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Benefits of Federal Registration, cont’d.
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Constructive nationwide notice of the trademark owner's claim
(so as to rebut any defense of good faith adoption and use
made after the date of registration).
Jurisdiction of federal courts may be invoked.
Registration can be used as a basis for obtaining registration in
foreign countries.
Registration may be filed with U.S. Customs Service to
prevent importation of infringing foreign goods bearing an
infringing mark.
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Benefits of Federal Registration, cont’d.
A registration is subject to cancellation for five years from the
date of registration by anyone who believes that he or she will be
damaged by the registration. After this time, a registration may
only be cancelled due to certain statutory grounds. 15 U.S.C. §
1064.
After 5 years, a Principal Register registration may become
“incontestable” as conclusive evidence of the registrant's
exclusive right to use of the mark, subject to certain statutory
defenses. Must file a Section 15 Affidavit of Incontestability.
Contingent on registration of a mark, the filing of an application
establishes a constructive first use date, nationwide in effect, as
of the filing date of the application. 15 U.S.C. § 1057(c).
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Filing a Trademark with the USPTO
Application process
– Completion of the formal application.
– Submission of a drawing showing the mark.
– Submission of at least one sample mark as actually used in U.S.
commerce.
Application review by USPTO.
Publication and potential opposition by third parties.
Must have actual use before registration will issue.
Supplemental Register available for merely descriptive marks.
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Bases for Filing U.S. Trademark Applications
Use-based trademark applications.
Intent-to-use (“ITU”) applications.
Ownership of a foreign registration.
Ownership of a pending foreign application.
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Federal Registration of Trademarks
Important Federal Registration Deadlines:
Between 5th and 6th years:
File Section 8 affidavit of use.
After 5 years of consecutive use:
File Section 15 Affidavit of Incontestability. Recommended
but not required.
Every 10 years after registration:
File Section 9 renewal and Section 8 affidavit of use.
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State Registration of Trademarks
Trademarks can also be registered at the state level under state law.
In California, the Secretary of State’s office maintains registration
and all updates of California state trademarks and service marks.
Website at http://www.sos.ca.gov.
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Proper Trademark Use
Continuous Use. Do not let your mark become abandoned.
Continuously use your mark in its registered form with the goods
or services listed in your registration.
Prevent Brand Genericide. Accompany mark with generic
term. Do not let your mark become the common or generic term
for your product. Remember, generic terms cannot function as a
trademark.
Examples: “KLEENEX brand tissues”
“XEROX copiers”
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Proper Trademark Use
Past victims of genericide:
ASPRIN
ESCALATOR
THERMOS
ZIPPER
YO-YO
RAISIN BRAN
CELLOPHANE
HEROIN
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Proper Trademark Use
Grammar. A mark should be used as an adjective, not a noun or a
verb. The Mark (adjective) modifies the generic term (noun).
Yes: “XEROX copiers”
No: “Please Xerox the report.”
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A mark should not be used in the plural unless the mark itself is
plural.
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A mark should not be used in the possessive form unless the mark
itself is possessive.
YES: JACK DANIEL’S whiskey. NO: Jack Daniels whiskey
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Proper Trademark Use
Set the Mark Apart. Marks should be set off from the
surrounding text.
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Examples:
Large type – all caps or initial caps.
Quotation marks.
Use of different colors.
Distinctive lettering.
Different font or stylization.
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Proper Trademark Use
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TM and Registration Notices. Provide notice of your trademark
rights.
Examples:
“TM” or “SM” symbol.
The letter R enclosed in a circle: ®
Reg. U.S. Pat. & Tm. Off.
Registered in U.S. Patent and Trademark Office.
Use of the word “brand” following the mark.
Use a credit line. Example: XEROX is a registered trademark of
Xerox Corporation.
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You Snooze…You Lose
Must enforce what you’ve got
– Trademark watch services.
– Employees monitoring the Internet.
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Trademark Infringement
Is the mark likely to cause consumer confusion as to the source of the goods
and/or services
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Strength of the mark
Similarity of the mark
Proximity of the goods
Likelihood of expansion of the product lines
Evidence of actual confusion
Marketing channels used
Type of goods or services and the degree of care likely to be exercised by
purchasers
– The second user’s intent in selecting the mark
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Strength of the mark
Courts look to the following:
1) The type of mark, e.g. arbitrary, suggestive, descriptive, or
generic.
2) The extent of third-party use.
3) Extent of use of mark, e.g. advertising and sales.
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Similarity of the marks
The marks must be considered as a whole.
1) Appearance
2) Sound
3) Meaning
4) Commercial impression
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Proximity of the Goods/Services
Primary question is whether the products are related in some
manner likely to lead the public to mistakenly believe that one
product emanates from or is sponsored by another.
Categories:
1. Competitive
2. Non-competitive but related
3. Non-competitive and unrelated
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Likelihood of Bridging the Gap
Defined as the senior’s users interest in preserving avenues of
expansion and entering into related fields.
Either actual plans for expansion, or consumer’s assumption that
expansion is likely.
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Evidence of Actual Confusion
Can be strong evidence showing there is likelihood of confusion.
Examples:
• Evidence showing an actual purchase was affected by
confusion.
• Inquiries as to possible connection between the parties.
• Number of instances of confusion, as compared to total sales.
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Purchaser Sophistication
Sophisticated consumers may be expected to exercise greater care.
Generally speaking, buyers exercise greater care in their purchase
of expensive goods.
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Defendant’s Intent
Bad faith may be sufficient to justify the inference of likely
confusion.
Some cases have held that where a defendant adopted a mark with
the intent of deriving benefit from plaintiff’s reputation, this is
sufficient to justify the inference that there is confusing similarity.
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Secondary Meaning:
Consumer association of the mark with a single source. Also known as
source association or acquired distinctiveness. When the primary
significance of the term in the minds of the consuming public is with a
single source.
Direct Proof
•Unsolicited publicity, e.g. news articles
•Licenses and requests for licenses
•Consumer correspondence
•Testimony by consumers
•Survey evidence
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Inferential Proof
•Long use
•Extensive sales in dollars or units, and geographic coverage
•Advertising dollar expenditures
•Sample advertisements from various media
•Circulation figures for advertising media used
•Trade-show and point-of-purchase displays
•Advertising by customers
•Copying by others
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Trademark Dilution
The lessening of the capacity of a famous mark to identify and
distinguish goods or services.
Blurring and tarnishment.
Plaintiff need only to prove a likelihood of dilution.
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Q&A
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