by Tara M. Madison

It’s Girl Scout Cookie Time!  The arrival of those industrious young women and the delicious products they peddle is always a welcome time of year at our home.  We have been waiting for a year to get our Samoas fix.  This year we scoured the product list, but no Samoas.  Our astute Girl Scout representative noticed our dismay and quickly steered us toward the Caramel deLites, which she assured us was a worthy alternative.  The Caramel deLites looked like Samoas, were packaged like a Samoas, but just were not called Samoas.  What gives? As a trademark attorney and a Girl Scout cookie aficionado, I had to know more.

Upon further research, which admittedly has not been confirmed by the Girl Scouts (or any other parties involved for that matter), it appears that the two names for the same Girl Scout cookie boils down to a good old fashioned trademark claim.  The Girl Scouts contract with independently owned bakeries to bake their cookies each year.  The original Samoas baker, Murray Bakery Products, Inc. d/b/a/ Little Brownie Bakers, apparently coined the name Samoas and/or was the first to start using it in commerce to identify the cookies they produced for the Girl Scouts.

A sometimes little known fact about trademarks is that one can acquire what are referred to as common law trademark rights simply by using a distinctive word or phrase in commerce as a source identifier for a particular good or service.  But, Little Brownie Bakers did even better than that.  It obtained a federal trademark registration for Samoas in 1986.  Thus, the Little Brownie Bakers became the exclusive owner of Samoas to identify cookies throughout the United States.  Well played, Little Brownie Bakers, well played.

As the market for Girl Scout cookies expanded over the years, the Girl Scouts have had to commission the assistance of additional bakeries.  The other bakeries, however, cannot use the Samoas trademark unless the trademark owner grants them the right, which apparently has not happened.  And, in fairness, Interbake Foods, LLC, the bakery that produces Caramel deLites may not want the name, since it too has a federal trademark registration for the Caramel deLites brand cookie.

Unconfirmed internet research suggests that each independent bakery that bakes for the Girl Scouts uses their own recipe, so the Samoas brand cookie really is not the same cookie as the Caramel deLites brand cookie. Whether you get the Samoas or the Caramel deLites seems to depend on where your particular Girl Scout Troop’s cookies are sourced, which I understand can change from year to year.  The old adage, “you get what you get and don’t throw a fit,” comes to mind.

In case you are worried about the future of other Girl Scout cookie favorites, rest assured that the Girl Scouts filed and obtained their own federal trademark registrations for Thin Mints, Trefoils, and Girl Scout S’mores, so all is not lost!

In fairness to all the hard working Girl Scout bakeries, I must admit that we thoroughly enjoyed the two boxes of Caramel deLites we purchased.  But, nostalgia did leave us longing for the original…  It’s a good lesson to all you users of distinctive words and phrases out there…  Do what you can to stake your claim to the brand name associated with the good or service you provide.  Little Brownie Bakers took action to protect its intangible asset by filing a federal trademark application.  What likely seemed like a small investment in an inconsequential asset was sold to Kellogg North America Company in 2003.  A trademark success story to be sure.  So, in terms of “what’s in a name” for Little Brownie Bakers or it successors, I would suggest a whole heck of a lot.

By Tara M. Madison

For over 70 years, the Lanham Trademark Act has banned the federal registration of any trademark comprised of “immoral, deceptive, or scandalous matter” or matter which may “disparage. . . or bring [persons, institutions, beliefs or national symbols] into contempt or disrepute.”  Over the years, the application of the U.S. Patent and Trademark Office’s (“PTO”) discretion in this regard has resulted in the refusal to register marks like KHORAN (wine) and BUBBY TRAP (brassieres), while others such as BUDDA BEACHWEAR (clothing), BADASS (musical instruments), and BIG PECKER BRAND (t-shirts) have been permitted.  This increasing tolerance of edgy trademarks is undoubtedly due, at least in part, to a change in cultural sensitivities over time.

Two recent rulings by the United States Supreme Court and the Federal Circuit Court in 2017 have deemed the Lanham Act’s bars on disparaging and scandalous trademarks to be a violation of the First Amendment freedom of speech.  In Matal v. Tam[1], the United States Supreme Court unanimously struck down the prohibition on disparaging trademarks. At issue in Tam was registration of “THE SLANTS” as a trademark for an Asian rock band.  The PTO had previously refused to register the mark on grounds that it disparaged persons of Asian descent.  The Supreme Court struck down the disparagement clause, holding that trademarks were private speech, not government speech and that speech may not be banned simply because it may offend.  Because the Supreme Court addressed only the disparagement bar in Tam, the Lanham Act’s prohibition against federal registration of immoral and scandalous trademarks remained in force . . . until the Federal Circuit rendered its opinion in In Re: Brunetti[2] several months later.

At issue in Brunetti was the “FUCT” brand for clothing.  Finding the FUCT trademark to be the phonetic equivalent of the “F word,” the PTO denied registration of “FUCT” as a scandalous mark.  Following the reasoning previously applied by the Supreme Court in Tam, the Federal Circuit also struck down the Lanham Act’s restrictions on “immoral and scandalous” trademarks as unconstitutional content discrimination.

It is expected that 2018 will bring a rash of applications for marks that may have been previously deemed disparaging, scandalous or immoral in the pre-Tam and Brunetti world.  One restriction appears to remain.  Under current trademark law, a federal trademark registration can be granted only in connection with goods and services lawfully regulated by commerce.  For now anyway, the “MAKE MARIJUANA GREAT AGAIN” trademark could not be federally registered as a brand of marijuana.

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[1] Matal v. Tam, 137 S.Ct. 1744 (2017).

[2] In Re: Brunetti, 877 F.3d 1330 (Fed Cir.2017).

By Sonny Chastain

In its recent campaign, Bud Light recognizes true friends of the Crown by raising a cold adult malted beverage and chanting Dilly Dilly.  The marketing slogan was created apparently coming out of nonsense and fun.  In its campaign, Bud Light seems to want people to celebrate with a lighthearted toast of Dilly Dilly and escape the Pit of Misery.

On December 1, Modest Brewing Company in Minneapolis introduced Dilly Dilly Mosaic IIPA into the market place.  Instead of the typical “stop it or else” demand letter, Bud Light turned an infringement situation into a marketing opportunity.  Bud Light sent an actor into the Modest Brewery dressed in medieval garb to read a pronouncement from the Crown.   The Town Crier proceeded to read from a scroll, requesting Modest’s latest brew be put on a limited edition run.  The Town Crier stated that the Crown was flattered by the loyal tribute, but noted that Dilly Dilly is a motto of the Crown and disobedience would be met with additional scrolls, formal warning, and a private tour of the Pit of Misery.  As a peace offering, the Town Crier also offered two employees a free trip to the Super Bowl which is being held in Minneapolis.

The unusual cease and desist demand is achieving rave reviews on social media.   Instead of dilly dallying around in the typical strong-arm legal maneuvering, Bud Light raised a Dilly Dilly to the Modest Brewing Company.  In a creative manner, Bud Light made its point of protecting its trademark from further infringement, while generating some laughs and likely some goodwill among consumers. So, to Bud Light, Dilly Dilly!

By Sonny Chastain

General Mills filed an application to register the color yellow appearing as the uniform background on a box of Cheerios.   It contended that consumers have come to identify the color yellow specifically with Cheerios, when used in connection with the goods.  It submitted survey evidence and expert reports to support the claim of acquired distinctiveness.  However, the trademark examiner concluded that General Mills failed to prove acquired distinctiveness and that the mark fails to function as a mark.  An appeal was submitted to the Trademark Trial and Appeal Board (“TTAB”).

General Mills argued that the purchasing public recognizes the color yellow on a package of toroidal (ring or doughnut-shaped) oat-based breakfast cereal as an indicator that it is the source of the cereal.  The record showed that General Mills has sold Cheerios since 1945.  In the decade prior to 2015, General Mills spent over $1 billion in marketing yellow-box Cheerios with sales exceeding $4 billion.  However, the question was not whether consumers recognized the term Cheerios as a source indicator but whether the color yellow identifies origin.

The TTAB agreed with the examiner’s conclusion citing lack of exclusive use of the color yellow.  The Board noted that the examiner pointed to 23 cereal products that offered packaging in a similar color.  Several of the products are even offered by companies which are recognized as General Mills’ biggest competitors:  Kellogg, Post, and Quaker.  Some of General Mills’ survey subjects showed their awareness of several of the products, especially Honeycomb and Corn Pops.  Additional cereal boxes cited included Joe’s O’s, Honey O’s, Tasteeos, Honey Bunches of Oats, Crispix, and Life.  The Board concluded that General Mills is not alone in offering oat-based cereals or even toroidal shaped, oat-based cereal in a yellow package.  Thus, customers are unlikely to perceive yellow packaging as an indicator of a unique source.  While the color may be attractive and eye-catching ornamentation, it alone did not connect to a potential source.   The Board noted that while customers are familiar with the yellow color of the Cheerio’s box, the color yellow is only one aspect of the complex trade dress that includes many other features that perform as a distinguishing and source-indicating function.   It was not persuaded that customers perceive the proposed mark, the color yellow alone, as indicating the source these goods.  The Board found the yellow background did not acquire distinctiveness and does not function as a trademark.

The case teaches that it is important to recognize what mark or components thereof function to identify a source. A question to ponder is, with what features do consumers identify to connect a particular good or service with a source of origin? General Mills took an aggressive view of the source identifying capability of this color which the Board concluded was not correct.  It is possible that if additional features had been included in connection with the overall trade dress, that registration may have been possible.

Pixelated TM sign made from cubes, mosaic pattern

By Lauren Rucinski

The Supreme Court ruled Monday that a provision of federal trademark law banning offensive trademarks from federal registration is unconstitutional. Matal v. Tam, No. 15-1293 (U.S. June 19, 2017). The case concerned a dance rock band’s application for a federal trademark registration of the band’s name, “The Slants.” “Slants” is a derogatory term for persons of Asian descent. However, members of the band are Asian-Americans and the band believes that by taking that slur as the name of their group, they will help to “reclaim” the term and drain its denigrating force. However, the U.S. Patent and Trademark Office (“PTO”) denied the band name’s federal trademark application because the trademark was offensive.[1]

The provision of federal trademark law at issue is the “disparagement clause” and states that a trademark may be denied for federal registration on the basis that it may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” 15 USC §1052(a). In applying the provision to a given trademark, an examiner at the PTO considers the likely meaning of the matter and whether that meaning may be disparaging to a “substantial composite” of the referenced group. The fact that an applicant may be a member of that group or has good intentions underlying its use of a term does not obviate the fact that a substantial composite of the referenced group would find the term objectionable.[2] Relying on this provision and analysis, the Trademark Examiner rejected the band’s federal trademark registration. The band appealed to the Examiner and PTO appeals board and eventually to the US Federal Circuit Court of Appeals. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015). The Federal Circuit’s decision was a hodgepodge of reasoning, but ultimately found that the disparagement clause was unconstitutional. On appeal, the Supreme Court affirmed.

A unanimous court of eight of the Justices agreed that the disparagement clause violates the free speech clause of the First Amendment because it engages in viewpoint-based discrimination.[3] Viewpoint discrimination occurs when the government has singled out a subset of messages for disfavor based on the views expressed. The Court found that the disparagement provision engages in viewpoint-based discrimination because it would allow “happy-talk” or marks that promote positivity while discouraging disparaging or derogatory marks. Matal v. Tam, No. 15-1293 at 25. The Court went on to reiterate that “[g]iving offense” is a viewpoint and that the “public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.” Id. at 23 (citing Street v New York, 394 U.S. 576 (1969)).

Notably, the Court could not agree on whether trademarks are commercial speech. Commercial speech is subject to a relaxed standard of review. See Central Hudson Gas & Electric Corp. v. Public Service Commission of New York, 447 U.S. 557 (1980). However, all Justices agreed that regardless of whether trademarks are commercial speech, the viewpoint-based discrimination necessarily invokes a heightened standard, and in any case, the disparagement provision could not pass the relaxed standard. See Justice Kennedy’s Concurring Opinion in which Justices Ginsburg, Sotomayor, and Kagan joined.

The Court also held that although the PTO is an arm of the federal government, trademarks are private, not government speech. The Court opined that the “federal government does not dream up these marks and it does not edit the marks submitted for registration.”[4] Id. at 14. Therefore, the notion that the content of a registered mark is government speech is farfetched. The Court also pointed out troublesome, practical implications of labeling a trademark as government speech. For instance, other systems of government registration could easily be characterized in the same way, namely copyright. Id. at 18.

Monday’s decision is a boost to the First Amendment and could signify broader implications. It is significant because the Court directly addressed a constitutional, First Amendment question. The case was especially watched by others seeking to protect a brand deemed offensive by the PTO such as the Washington Redskins NFL team. It is also significant because although the PTO’s ability to deny a mark based on offensiveness may be diminished if not revoked, the extent of the First Amendment’s reach into trademark law is left unanswered.

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[1] Trademark law is not strictly federal law. A federally unregistered trademark may be enforced under state common law, or if it has been registered in a state, under that state’s registration system. Louisiana’s trademark law contains similar language to the federal law shot down in this case: “A mark by which the goods or services of any applicant for registration may be distinguished from the goods or services of others shall not be registered if it: (2) Consists of or comprises matter which may disparage or falsely suggest a connection with persons, living or dead, educational institutions, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” La. R.S. § 51:212.

[2] See the Trademark Manual of Examining Procedure at https://tmep.uspto.gov/RDMS/TMEP/current.

[3] Justice Gorsuch did not participate in the decision of the case.

[4] The Court further qualified that were trademarks to be considered government speech, the government would in fact be “saying many unseemly things, “expressing contradictory views,” and “unashamedly endorsing a vast array of commercial products.” Id. at 15 (citing marks such as “make.believe” (Sony), “Think different” (Apple), “Just do it” (Nike) and “Have it Your way” (Burger King)).

edtx

By Lauren Rucinski

On May 22, the Supreme Court tightened the reigns on where a patent infringement case with a corporate defendant can be filed, uprooting nearly three decades of common practice. TC Heartland LLC v. Kraft Food Brands Grp. LLC, No. 16-341 (May 22, 2017).

The specific statute for patent infringement venue states that a defendant may be sued in a judicial district (1) where the defendant resides or (2) where the defendant has committed acts of infringement and has a regular place of business.[1] Sixty years ago, the Supreme Court interpreted the patent venue statute to require that a domestic corporation only be sued in its state of incorporation. In Fourco Glass Co. v.Transmirra Products Corp., 353 U. S. 222, 226 (1957).  However, subsequent changes to venue rules in the 1990’s opened the door for a corporation to be sued anywhere it has sufficient contact. This change fostered forum shopping, allowing patent holders to seek out and develop patent friendly locations.

In TC Heartland, a corporate-defendant incorporated under the laws of Indiana was sued for allegedly infringing products in a Delaware district court. The Indiana corporation moved to transfer venue to the district court in Indiana. The Indiana corporation argued that under the patent infringement venue statute and the Supreme Court’s hold in Fourco, venue in Delaware was improper. The Delaware district court rejected the corporation’s argument and the Federal Circuit denied the petition for a writ of mandamus. The Supreme Court overruled the Federal Circuit, holding instead that the patent venue statute alone should control venue in patent infringement proceeding and that it is not to be supplemented by the general venue statute. The decision marks a drastic change from prior practices. Before the decision, the options for venue against a domestic corporation for patent infringement were quite numerous. For example, if a corporation ships an alleged infringing product to a state, that used to satisfy the venue requirements to file suit in that jurisdiction. The broad interpretation of venue allowed plaintiffs to cherry pick where the suite is filed. This is no more evident than the patent infringement “rocket docket” in the Eastern District of Texas.[2]  This Court, which is situated in the small town of Marshall, Texas, population c. 24,000, handles more patent lawsuits than federal district courts in San Francisco, Chicago, and New York. Marshall has often been referred to as the U.S. “patent litigation capital.” A combination of speedy infringement trials created by a series of local rules and allegedly plaintiff-friendly juries lead many plaintiffs to file patent infringement suites in this small, seemingly random Texas town.

The TC Heartland effectively nixes the “patent litigation capital” title in Marshall. The definition of a corporate residence is limited to the jurisdiction of incorporation and the general venue statute does not expand jurisdiction under the patent venue statute.

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[1] 28 USC 1400(b).

[2] For a New York Times article on Marshall and the patent infringement cases it hears, see http://www.nytimes.com/2006/09/24/business/24ward.html.

 

patent

By Lauren J. Rucinski

Generally, an invention is not patent eligible if it has become publicly known. If the patent is subject to a sale or offer for sale prior to the critical date, it has become “publicly known” and thus no longer eligible for patenting. This obstacle to a patented invention is known as the “on-sale bar” and is found in 35 U.S.C. 102. The statutory language to the “on-sale bar” is similar for patents governed by the pre-American Invents Act (“AIA”) version of 35 U.S.C. 102 and those governed by the AIA version. However, the AIA version include the phrase “or otherwise available to the public.” This lead to arguments that “secret sales,” or those in which the public had no knowledge of the invention, were not triggers for the on-sale bar. In an opinion issued on May 1, the Federal Court dismissed this type of argument, holding instead that the definition of “on sale” in the AIA version was not altered by the additional phrase. Helsinn Healthcare v. Teva Pharmaceuticals USA, No. 2016-1284 (Fed. Cir. May 1, 2017).

Helsinn Healthcare (“Helsinn”) was the owner of four drug patents which treated chemotherapy-induced nausea. Three of the four fall under pre-AIA rules and a fourth under AIA rules. Helsinn brought suit against Teva Pharmaceuticals (“Teva”) alleging that the filing of Teva’s Abbreviated New Drug Application (“ANDA”) constituted infringement of various claims of its four patents. In its defense, Teva argued that the drugs disclosed in the four patents were in fact on sale more than a year before the filing date of the patents. Id.at 4. Teva cited a deal between MGI Pharma, Inc. (“MGI”) and Helsinn which included a License Agreement and Supply and Purchase Agreement (“the agreements”). These agreements were effective almost two years before Helsinn filed its application for any of its four patents. The agreements were announced in a joint press release and in SEC filings. However, Helsinn argued that the agreements did not meet the requirements of the on-sale bar because despite the sale’s existence being available to the public, the agreements did not disclose the actual invention to the public, i.e. the dosage levels.

Because three of Helsinn’s patents fall under pre-AIA rules, the court first analyzed the pre-AIA on-sale bar’s definition of “on sale.” The court applied general contract law to find that the agreements between Helsinn and MGI were in fact a commercial sale and therefore enough to trigger the on-sale bar. Id. at 12-17.

Next, the court analyzed the AIA definition of “on sale” applicable to Helsinn’s fourth patent. Helsinn argued that the AIA changed the law by excluding “secret sales” from the on-sale bar provision through the addition of the “otherwise available to the public” phrase. Id. at 19. Because the details of the invention were not disclosed in the agreements made available to the public, the AIA on-sale bar should not apply. The court declined to make such a sweeping change to the on-sale bar holding instead that:

although confidentiality weighs against the application of the on-sale bar . . . that fact alone is not determinate. . . . [A]n invention is made available to the public when there is a commercial offer or contract to sell a product embodying the invention and that sale is made public. Our cases explicitly rejected a requirement that the details of the invention be disclosed in the terms of the sale.

Id. at 18, 23. The court went on to find that the invention in the fourth patent, like the invention in first three patents, was on sale more than a year before the filing date under the AIA version of section 102. Therefore, both the pre-AIA and AIA on-sale bars applied.

Finally, the court overruled the district court’s finding that the invention was not “reduced to practice” and therefore not ready for patenting. In order to trigger the on-sale bar for both pre-AIA and AIA governed inventions, the invention must also be “ready for patenting.” An invention is considered “ready for patenting” if it, for example, is reduced to practice. In this case, the court held that overwhelming evidence, including the results of studies performed by Helsinn and declarations of the inventors, established that the invention was reduced to practice and ready for patenting when the offer to sale was made by Hellsinn. Id.at 35.

The court refused to decide whether a “truly secret” sale, one without public knowledge of its existence, still triggered the on-sale bar and instead tied its holding to the facts at hand. Here, the existence of the sale was made known through the public press release and in SEC filings. However, the court’s unwillingness to diminish the scope of the on-sale bar is at least an indication that it may consider any sale, even secret sales, a trigger for the on-sale bar.

By Lauren Rucinski

On December 6, 2016 the Supreme Court ruled on the nearly $400 million dollar damages award to Apple, Inc. adding yet another chapter in the nearly five year-long case between the technology giant and a competitor, Samsung Electronics, Co. in Samsung Electronics Co., LTD., et al., v. Apple Inc., 580 U.S. __ (2016). When Apple released its first-generation iPhone back in 2007, it secured multiple design patents which included the black rectangular front face, rounded corners, raised rim, and grid of 16 colorful icons on a black screen. Subsequently, Samsung released a series of smartphones that resembled the iPhone and Apple sued in 2011 alleging, inter alia, that Samsung’s various smartphones infringed Apple’s design patents. Apple was successful in securing a three hundred and ninety-nine million dollar damages award, the entire profit Samsung made from the sales of its infringing smartphones. When the case was brought to the Federal Circuit in May of 2015, the court affirmed the damages award, holding that Apple was entitled to the total profits gained by Samsung on its infringing smartphones because consumers could not separately purchase components of the smartphone. On application of Samsung, the Supreme Court granted cert.

Section 289 of the Patent Act allows a patent holder to recover the “total profit” an infringer makes from the manufacture or sale of the “article of manufacture to which [the patented] design or colorable imitation has been applied.” 35 U.S.C. §289. The Supreme Court held that determining the “total profit” is thus a two-step process: (1) identify the “article of manufacture” and (2) calculate the infringer’s total profit made on that article of manufacture. The only question answered by the Supreme Court in the opinion relates to step 1 and is whether, in the case of multi-component products such as a smartphone, the relevant “article of manufacture” must always be the end product sold to the consumer or whether it can also be a component of that product.

The Court reasoned that “article of manufacture” has a broad meaning, broad enough to encompass both a product sold to a consumer and a component of that product. Therefore the Federal Circuit’s finding that the entire smartphone was the only permissible “article of manufacture” for the purposes of calculating §289 damages, was too narrow an interpretation of “article of manufacture.” Thus the Court reversed the Federal Circuit’s finding that the $399 million damages award was proper based on that reasoning.

Notably, the Court declined to address whether the relevant “article of manufacture” for the specific case at hand was indeed the smartphone or a particular component of the smartphone, our step 2, because of a lack of briefing from the parties. That issue was remanded to the Federal Circuit, leaving Apple and Samsung once again to battle it out in this ongoing dispute.

IP Infographic - Man

By Devin Ricci

Trademarks and service marks (collectively, “trademarks”) are source identifiers or brand names. For example, JUST DO IT ® identifies a brand of athletic clothing and gear by Nike. A trademark is essentially a word, phrase, symbol, design or combination thereof that is used to identify and distinguish the source of one party’s goods or services from those of another.

In reality, trademarks are regulated and protected in order to protect the consuming public. Trademarks have evolved as a use-based right which protects the goodwill that the public has come to associate with a source identifier for a good or service. Therefore, as a use-based right, a trademark owner develops his rights by actually using the mark in commerce. In other words, as a user consistently uses the mark overtime with his or her respective products and services, the marketplace of applicable consumers begins to associate the mark with the user’s goods and/or services, thereby creating and instilling the goodwill protected by trademark law. In it in this sense that a consumer ordering a BigMac® sandwich at any McDonald’s® restaurant knows exactly what he is going to receive.

Furthermore, because a trademark is a use-based right, it is not always necessary to register the mark in order for the user to obtain and assert rights in the mark. Indeed, most state laws provide for common law trademark rights which offer some protection to unregistered marks. However, because the degree of protection varies greatly from state to state, registration of a mark (particularly, a federal trademark registration) has significant advantages, particularly in a state such as Louisiana which traditionally rebukes common law traditions.

For example, a federally registered trademark is eligible for relief under the Lanham Act1 and allows a trademark owner to bring suit in federal court. A federal registration also carries with it presumptions of the validity of the mark, ownership by the registrant, and exclusive rights to use the mark in conjunction with the claimed goods and services. The federal registration essentially acts as a constructive use of the mark throughout the United States. This generally means that the user is considered to have at least minimal use-based rights throughout the entirety of the United States as of the registration date (with the ability to tie back that use to the date the application was filed). Such priority effectively prevents others who would start selling like goods or providing like services in a manner which would be deemed confusingly similar2 to the registered mark. Moreover, a federal registration can also aid in land-locking prior users into the geographic regions in which the prior users were operating when the registrant’s marks actually registered.

ELIGIBILITY OF TERMS FOR TRADEMARK PROTECTION

In the trademark sense, a term or word can fall under one of five categories – arbitrary, fanciful, suggestive, descriptive and generic. Terms that are arbitrary, fanciful and suggestive are distinct on their own rendering them prime candidates for trademarks. These are terms that do not immediately convey the underlying product or describe characteristics or intended usage of the products of services. For example, with Apple® computers, the term “apple” has nothing to do with computers and would thus be arbitrary, rendering it a prime candidate for a trademark. At the bare minimum, a term should be suggestive, meaning that it takes an imaginative step for a consumer to link the intended trademark with the covered goods and services. This need for an imaginative step or indirect association can be the defining line between a suggestive mark that is sufficiently distinct to be protectable and a descriptive mark that cannot be protected on its own.

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Trademarks cannot be used to protect generic or purely descriptive terms for the goods and services they identify, with one caveat discussed below. It is in this sense that Apple® computers cannot foreclose upon others using the term “computers,” and Planter’s® Peanuts cannot stop someone from using any type of “nuts” in their brand. Purely generic terms are free for all to use and can never be subject to trademark protection. It is possible over time to develop a descriptive mark into a protectable trademark. To do so, the mark must be sufficiently used for a sufficient period such that the consuming public begins to identify the mark as yours despite the descriptive nature. This is termed as the development of secondary meaning or “acquired distinctiveness” to the descriptive mark.

TRADEMARK DESIGNATION – WHERE AND WHEN TO USE TM, SM, OR ®

The TM and SM symbols represent trademark and service mark, respectively. These marks can be used without registration to alert third parties that the user is claiming some rights in the designated word, phrase, symbol, design, or combination thereof as a trademark. As soon as a party commences any sales, offers for sales, or marketing materials that employ a mark in conjunction with goods or services, the mark should be designated with either the TM or SM symbol. Failure to properly do so may hinder or prevent the user from asserting its rights in the mark.

Therefore, anywhere the mark is used as a source identifier (e.g., websites, product labels, e-mail footers, advertising materials, product packaging, etc.), the mark should be designated as such. To do so, the symbol should be prominently displayed so as to alert third parties that the user asserts trademark rights, but that does not mean that the symbol has to be a focal point of the mark. For example, the following designation of “trademark” with the “TM” displayed as a superscript would suffice: TrademarkTM.

It should be further noted that technically the term “trademark” is only fitting when discussing a source identifier for goods while the term “service mark” is only proper when discussing a source identifier for services. Through time, the public has grouped the two in common language under the term “trademark.” Despite this trend, the correct and recommended practice is to use the appropriate TM or SM designation depending on whether the mark will identify goods (TM) or services (SM). If the mark is used to designate both, however, it is acceptable to only use the TM symbol.

The ® (meaning “Registered”) designation, on the other hand, can only be used after federal registration has been obtained from the United States Patent and Trademark Office (“USPTO”). During the application process, it is suggested that the applied-for mark is marked with the TM or SM symbol, as applicable, to alert the public that the user asserts rights in the mark. After the applicant receives a certificate of registration from the USPTO, use of the mark as a source identifier for the registered goods or services should be designated by the ® symbol to alert the public that the user has obtained a federally registered trademark.

Finally, trademarks should be used as adjectives, not nouns. When properly used, trademarks modify the underlying products to present a source or brand of the product – e.g., Planter’s® Peanuts, Nike® tennis shoes or Apple® computers. Use of a trademark as a noun is improper and could diminish trademark rights.

APPLICATION PROCESS

A common question regarding the trademark application process is: “When should a user consider filing a trademark application?” Although the answer varies under the circumstances, the safest time to start considering the trademark application is during the brand development process. Even when picking and determining a brand name, it would be wise for a potential user to conduct a search of the federal trademark registry to determine if a prior federal registration exists which may prevent the widespread use of the mark. If the search does not turn up any prior registrations, which may cause issues down the line, the user should then consider filing an application with the USPTO to secure federal rights in the mark.

Generally, there are two types of applications a user can file with the USPTO: the use-based application and the intent to use-based application. Trademarks are use-based rights, so the trademark must be used to obtain any rights in the mark, including a registration. Furthermore,to obtain federal protection, the use must be in interstate commerce, i.e., the use must occur in at least two states.

Use-based applications are appropriate when a mark is already in use in commerce. The applicant files an application complete with specimen materials showing use of the mark in conjunction with the claimed goods and services with the USPTO. Typically, in about three to six months, the applicant will receive correspondence from the USPTO that the mark is either accepted or rejected. If rejected, the applicant has the opportunity to submit a response to the USPTO to overcome the rejection and seek registration. Once a mark is accepted by the USPTO, it is published in the Official Gazette whereby third parties have an opportunity to challenge the mark based on their prior registrations. If the application avoids any challenges, it is registered, and a certificate of registration is mailed to the applicant. The typical period for an application which “smoothly” passes through the USPTO is about six months to one year from date of filing to receipt of a certificate of registration. As previously stated, all trademarks should be designated with the proper TM or SM markings throughout the application process.

An intent-to-use (commonly referred to as an ITU) application acts as name reservation for a mark. If a user anticipates launching a product or campaign under a particular brand, the intent-to-use application allows them to file an application with the USPTO, which will reserve the mark until the applicant is capable of proving the mark is used in interstate commerce. An intent-to-use application follows the normal path of a use-based application with the exception that no specimen of use is filed with the application because no use has yet commenced. If the mark is accepted, the applicant is given six months from the date of acceptance to file a statement of use with applicable fee showing use of the mark in conjunction with the claimed goods or services in interstate commerce. If the applicant is unable to submit the statement of use at the time, the applicant is able to pay extension fees on a per class basis for an additional six-month extension of the name reservation. With timely requests and payments of extension fees, the applicant is afforded up to two and a half years of extensions (three years from the date of the notice of allowance) before the mark will be deemed abandoned.

KEAN MILLER TRADEMARK PROCESS

Kean Miller’s general practice for federal trademark applications is to conduct trademark searches, and if the search results come back favoring registration, to prepare and file a single federal trademark application in a single class of goods or services for a flat rate. The general format of the process includes the following services:

  • Search of the federal trademark records to assess whether a pre-existing federal trademark registration may cause the denial of the application on grounds of confusing similarity;
  • Analysis of the trademark search results including the creation of a memorandum to the client discussing prior registrations and other troublesome aspects which may arise during the application process;
  • Drafting and filing the federal trademark application (including filing fee for one class of goods/services3);
  • Tracking the application with the USPTO;
  • Responding to any non-substantive office actions on the client’s behalf; and
  • Mailing the trademark registration upon receipt.

A similar process is also available for state trademark registrations.

 

1 The Lanham Act (also known as the Trademark Act of 1976) is the federal statute that governs trademarks, service marks and unfair competition. It was passed by Congress on July 5, 1946, and signed into law by President Harry Truman.

2 Please note: “Confusing Similarity,” i.e., whether or not the public is likely to confuse the source of the marks, is the test for trademark infringement under the Lanham Act. The analysis of confusing similarity is left out of this primer in an attempt to limit the scope to information on obtaining rights as opposed to enforcing them after obtained.

3 The USPTO requires trademark applications to provide a specific description of the types of goods and services to be identified by the trademark. The USPTO divides goods and services into as many as 45 different classes, each of which requires a separate $275 filing fee. Applications for multiple classes of goods or services will require an additional fee of $275 per class for which the mark is applied.

 

Disclaimer: This guide does not constitute legal advice and is not intended to supplement the advice that would be obtained by retaining a qualified trademark attorney to help you identify and protect your intellectual property rights. It is being provided in an effort to clear up some of the more common trademark myths and misconceptions. It is highly suggested that anyone facing a potential trademark issue seek legal counsel on the issue.

By Devin Ricci

Copyright law protects original works of authorship fixed in a tangible medium. Although the phrase may seem complicated, copyrights are perhaps the most basic and widespread of the intellectual property rights. Copyright law affects our daily lives. However, copyright’s effects are most apparent in the way they negatively impact everyday life – as in the reason we can’t “pirate” music or movies. At its core, copyright law protects authors and, in doing so, fosters original expression. Copyright owners are provided with a number of exclusive rights to protect their interests and prevent others from copying or profiting from their original expression, both during their lifetime and beyond.

The owner of a copyright has the exclusive right to:

  • reproduce the work (i.e., make copies);
  • prepare derivative works based upon the work;
  • distribute copies of the work to the public by sale or other transfer of ownership, or by rental, lease or lending;
  • perform the work publicly; and
  • display the work publicly

It is in this sense that the owner of the copyright in a book (usually the author) has the exclusive right (i) to make copies (reproductions) of the book, (ii) to prepare derivative works of the book such as translations or a movie adapted from the book, or (iii) to sell copies of the book. Likewise, the owner of the copyright in a movie can prevent others from making and selling DVDs of the film, showing the film in theaters or elsewhere regardless of whether the showing was for profit, and transmitting copies online or for rent.

Although copyrights may be the most basic intellectual property right, Congress has amended the Copyright Act numerous times over the past century. Each amendment was in turn followed by numerous and often conflicting interpretations by U.S. courts. For this reason, copyright law is full of nuances and statutory regulations that can sometimes be difficult to understand. This guide presents some of the most common issues in copyright law to educate the reader on his or her potential rights and restrictions under U.S. Copyright Law.

THE BASIC REQUIREMENTS FOR COPYRIGHT PROTECTION

Copyrights are the easiest intellectual property rights to acquire. Whereas trademarks require use in commerce and patents require a long and expensive application process, copyright protection exists as soon as the ink dries. In other words, as soon as the work (i.e., the expression) is fixed in a tangible medium, copyright protection exists. Registering a copyright is beneficial, but the registration does not create the right; rather, it helps to enforce it.

There are two basic requirements for copyright protection: 1) it must be an original expression and 2) it must be fixed in a tangible medium. But what do these requirements really mean?

The Copyright Act of 1976 states that a work is fixed in a tangible medium “when its embodiment in a copy or phonorecord1, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.” In plain English, you have to give your original expression a physical embodiment to obtain copyright protection. For example, a work is protected by copyright once (i) the ink dries on the piece of paper, (ii) the paint dries on the canvas, (iii) the song is recorded onto a hard drive or another medium, or (iv) the photo or movie is captured on film2.

So how then can live performances and broadcasts such as football games be copyrighted? Originally, the company would satisfy the fixation requirement by broadcasting the game while simultaneously recording it on VHS, thereby fixing it in a tangible medium3.

DURATION OF COPYRIGHT

Copyrights are limited to a set term, after which the copyright lapses and the work falls into the public domain free for all to use and copy. The length of a copyright’s term depends on the type of author and when the work was created (or published, in some circumstances). Currently, the duration of a copyright lasts 95 years after the author’s death, if the author is a human.

In some circumstances the author is a company such as in a true work for hire situation. In that case, the copyright lasts for the shorter of (i) 120 years from creation or (ii) 95 years from first publication. Anonymous writings, or those done under pseudonyms, follow the same terms as companies, with one caveat: once the author becomes known, it lasts 70 years from the author’s death.

A copyright’s term is governed by the provisions of the Copyright Act in effect when the work was created (or, sometimes published). Therefore, you have to look to the provisions of the Copyright Act in effect at the time the work was created or published to determine if it has fallen into the public domain.

WHO OWNS A COPYRIGHT?

Under copyright law, the person deemed to have created a work is called its “author.” The copyright in a work initially vests in the author or authors of the work. Copyright law recognizes three kinds of authorship: (1) sole authorship, (2) joint or co-authorship, and (3) employer authorship via works made for hire.

Sole authorship is the simplest – one person creates the work and owns it in his or her name. Joint authorship occurs when two or more people create a joint work. A “joint work” is defined by the Copyright Act of 1976 as “a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” The general requirements for joint authorship are: (i) a copyrightable work created by (ii) two or more “authors” who each contributed copyrightable materials, with (iii) the intent that their contributions be merged into a unitary work. This is important because the authors of a joint work are co-owners of the copyright in the work. Consent of all co-authors in a copyright is only required to assign the copyright or to grant exclusive licenses. Each co-author may grant a non-exclusive license on his own without the consent of the other co-author(s). The licensing co-author is required to account to the other co-author(s) for any profits received from that license.

WORK MADE FOR HIRE

In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author and, unless the parties have expressly agreed otherwise in writing, owns all of the rights comprised in the copyright. The term “work made for hire” is over-used and, more often than not, misused. In reality, work made for hire is limited to two scenarios.

The most common work made for hire scenario occurs when the work is created by an employee acting in the course and scope of his or her employment. For example, if a marketing company has one of its graphic designers on staff create a logo on behalf of a client, the company, not the individual designer, is deemed the author of the copyright and owns all rights to it by default. Some courts have expanded the term “employee” beyond that of a statutory employee for a work made for hire by adopting common law agency principles to determine if an employment relationship exists under the specific circumstances at hand.

A second provision in the Copyright Act of 1976 allows for certain types of works to be “made for hire” by non-employees if the parties agree as such in writing before the work is made. These are often thought of as commissioned works made for hire. However, the Copyright Act of 1976 only recognizes nine categories of works that can qualify under this provision4.

Works made for hire are much more limited than many people think. Companies and customers too often rely on a work being made for hire when it is not. Numerous contracts are written with work made for hire provisions in them that likely can’t be enforced. In the example above, the client of the marketing company who paid for the logo would likely not be the author of the logo even if the client signed a “work made for hire” agreement with the marketing company. The client did not employ the graphic designer, and logos do not qualify as one of the nine enumerated works. Therefore, to own the copyright in the logo, the client would need a written assignment from the marketing company.

For more information, see Copyright 202, Work Made for Hire.

ASSIGNMENT

The sale of a work itself does not automatically carry with it the transfer of the copyright in the work. Copyrights can only be transferred via a signed written agreement. By default, an artist who sells his painting retains the exclusive rights to make reproductions of that painting. The buyer may obtain that particular production or copy, but he only obtains a limited license such as to view or show that particular copy of the work. It certainly does not give the buyer the right to make more paintings or other products showing the artwork. If the buyer did want these rights, he would have to obtain them from the artist. For this reason, it is advisable for parties to work out and memorialize any intended transfer of rights in a copyrighted work in a written agreement.

MORAL RIGHTS

In addition to the numerous rights afforded by copyright law, the creator of certain rights may also be entitled to a separate non-monetary set of rights known as “moral rights.” These rights protect the personal and reputational attributes of the work’s creator, such as the right of attribution – the right to get credit for your work by name.

An author generally retains his moral rights through an assignment or transfer of the copyright in his work. To terminate such rights, they must be expressly waived in writing. To account for this requirement, many copyright assignment agreements specifically call for such a waiver. Numerous artists, particularly in the marketing and advertising fields waive their moral rights, subject to a reservation of their portfolio rights.

THE BENEFITS OF TIMELY REGISTRATION

Registration is no longer a requirement for copyright protection under U.S. Copyright Law, but registration is required to commence an infringement action. Numerous copyright infringement cases are put on hold or even thrown out because the copyright holder has failed to register the work before bringing suit. An early registration of a copyrighted work can avoid these hurdles at a time when quick action might be necessary.

The timing of registration also weighs in on the recovery of damages and attorney fees. A copyright holder can seek actual damages plus profits from the infringer, subject to acceptable deductions. However, if the work is registered prior to the infringing activities, the copyright holder may instead elect to recover statutory damages which can range from $750 to $30,000 per work infringed. These statutory damages can be increased up to $150,000 per work infringed if the infringement is found to be willful. The timely registration also enables the copyright holder to seek attorney fees.

The benefits of registration are not limited to litigation. The owner of a copyrighted work can evoke the assistance of U.S. Customs to prevent the importation of infringing contraband.

FAIR USE

The concept of “fair use” is a widely misunderstood and misused tenant of copyright law. Individuals and companies of all sizes often believe that their potentially infringing actions are excused by the Fair Use Doctrine. However, all too often they are incorrect in their assumptions and have made a potentially costly mistake. The Fair Use Doctrine provides an affirmative defense, which is not the best stance to take when conducting a risk analysis on copyright infringement. The fair use defense takes the position that you infringed a copyright, but that the law provides an excuse for your particular infringement under the specific circumstances of your infringement.

The reality is that the Fair Use Doctrine is a lot more limited than people think. For a more in depth discussion on the applicability of the Fair Use Doctrine, see Copyright 202: Fair Use. However, a safe rule of thumb for fair use would be that if the use of another person’s material is commercial in nature, it is likely not fair use. If you are not sure if your intended use would be permitted under the Fair Use Doctrine, consult an attorney who can help you analyze the issue.

WEBSITES

We are routinely asked about copyright protection for websites. Websites are capable of copyright protection. To the extent that the layout, coloring, and other non­functional features are original, they can be protected under copyright law. Practically speaking, websites are ever evolving with the display and content changing daily. Therefore, it may be impractical to register all the various changes with the Copyright Office. Some web site creators choose only to register their webpage designs when major overhauls occur; others forego registration entirely. It is recommended that the site is marked as copyrighted as follows:

[“© or Copyright”] [owner] [year published].

For example, the marking on this guide would be: © R. Devin Ricci 2016.

For more in-depth information on these and other topics, see the Copyright 202 series of articles.

 

1 The Copyright Act is old. Despite its numerous updates, it still uses words like “phonorecords” in its statutes. Think of this term as a catch all for any device that holds recorded sounds, be it a cassette, cd, hard drive for mp3s or another similar device.

2 Note: this is a non-exhaustive list, and there are numerous ways to fix an expres­sion in a tangible medium.

3 Note: today, live performances are protected through the international Trade-Re­lated Aspects of Intellectual Property Rights (TRIPS) agreement, which extends beyond this basic guide. TRIPS is an international agreement administered by the World Trade Organization (WTO) that sets down minimum standards for many forms of intellectual property (IP) regulations as applied to nationals of other WTO members.

4 The nine enumerated works are a contribution to a collective work, a part of a motion picture or other audiovisual work, a translation, a supplementary work, a compilation, an instructional text, a test, answer material for a test, and an atlas.

 

Disclaimer: This guide does not constitute legal advice and is not intended to supplement the advice that would be obtained by retaining a qualified copyright attorney to help you identify and protect your intellectual property rights. It is being provided to clear up some of the more common copyright myths and misconceptions. It is highly suggested that anyone facing a potential copyright issue seek legal counsel on the issue.