Intellectual Property Webinar Series 1

IP Prosecution Pitfalls in Litigation: Trademarks and Copyrights (Part 2)

April Besl Cincinnati, OH Karen Gaunt Cincinnati, OH Lynda Roesch Cincinnati, OH

Pitfalls in trademark prosecutions can occur Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights4 Pre-filing » Searching Filing » Preparation of application Prosecution » Interaction with USPTO Post-registration

Why Does It Matter? Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights5 What you say and do in before, during and after prosecution of a trademark and copyright can last forever!

Lasting Effects? Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights6 Opposition Proceedings Cancellation Proceedings Litigation Cease and Desist Letters Enforcement Actions on the Web Renewals of Trademarks

Pitfalls Prior to Filing — Not Searching Trademark Searching Issues Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights7 Why do we search? » Assess Risk of Use » Assess Risk of Registration » Assess Issues That Might be Raised in Prosecution such as likelihood of confusion, descriptiveness and genericness » Defense to Willful Infringement Claim » Save future expense

What Pitfalls are Avoided by Searching? Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights8 Know the Landscape » Third party uses » Descriptiveness/disclaimer » Genericness » Surname » Geographical indicators Can modify the mark to make it distinctive and registrable Can define the goods/services to avoid potentially conflicting marks Can create a good faith defense

Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights9 Preliminary searches Scope: » Federal register » State register Additional capabilities: » Foreign countries Google.com search » Common law usage » Some internet usage Full searches scope: » Federal register » State registers » Common law (product guides, telephone books, articles) » Web common law » Business records » Domain name registry » Internet usage Trademark Searches and Clearance

Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights10 Mark » Standard Characters » Design Element Drawing Owner’s Name Goods/Services Filing Basis / Use or Intent-to-Use Date of First Use in Commerce Specimen Fee » Depends on the method of application—TEAS, TEASPLUS Federal Registration Process

Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights11 Prosecution: Currently 3 Months to Initial Review Office Action Issued Technical Deficiencies Description of Goods & Services Disclaimer Requirement Substantive Refusal Likelihood of Confusion with another mark Descriptiveness / Genericness Surname refusal Deceptively Misdescriptive Geographical Indicators

Trademark PITFALL #1 Filing in the name of the WRONG owner Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights12

Scenario #1 Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights13 ABC Widgets, Inc., wants to sell a new gadget next year under the mark WIDEGTA. Files an intent to use” application with the US Trademark Office but accidentally files in the name of “ABC Widgets, LLC” The Statement of Use is rejected for being filed in the wrong name. What can ABC Widgets do?

Scenario #1: What can ABC Widgets do? Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights14 Certain errors can be corrected by amendment: 1)Name listed is trade name – not a legal entity 2)Name listed is operating division of applicant 3)Name omits minor clerical error – e.g. The or Inc 4)Old name of company listed where change of name took place before filing 5)Entity listed did not exist

Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights15 What if ABC Widgets had filed in the name of it’s sister company DEF Widgets, Inc.?

Non-Correctable Errors Certain errors cannot be corrected with an amendment. In fact! Errors in owner name can VOID an application as filed Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights16

Scenario #1 – One Last Tweak Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights17 ABC Widgets, Inc., files an assignment of the intent to use application transferring the mark from its sister corporation to it to try and “fix” the situation. Will this work?

Assignment of ITU applications are only allowed to successors in interest of the business Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights18

Lasting Impact? Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights19 Application / Registration vulnerable to opposition or cancellation Lost registrations and applications negate priority and protection

How to avoid ownership pitfalls Ask the right questions! Who owns the mark? Have corporations or LLCs been formed? Have transfers taken place? Who owns the application? Discuss intended use with client to guide ownership Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights20

Trademark PITFALL #2 Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights21 Amendments to the Supplemental Register

Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights22 Applications for merely descriptive marks can sometimes be amended to the Supplemental Register. Still allows for nationwide priority and protection

Scenario #2 Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights23 Company A and Company B are competitors in the cleaning products field. Both independently create a new cleaning product under the mark QUICK DRY CLEAN.

Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights24 1/1/2013 Company A Files ITU Application 2/1/2013 Company B Begins Using Mark 3/1/2013 Company B Files Use Application 4/1/2013 Company A Begins Using Mark

Trademark Office issues Office Action on descriptiveness grounds. In response, Company A files Statement of Use and amends the mark to the Supplemental Register. All clear for Company A? Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights25

Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights26 Filing of the amendment to the Supplemental Register changes the priority date to the filing date of the Statement of Use! Company A is Now the “Junior” to Company B – Both in Use AND at the Trademark Office!

Lasting Impact? Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights27 Company A’s application will now be refused for likelihood of confusion with Company B’s “senior” application Company B could even stop Company A from moving forward with product line!

Perform searches of register before filing amendments to the supplemental register Discuss risks of descriptiveness with client Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights28

Federal Registration Process Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights29 Be careful when responding to Office Action to avoid statements against interest Be careful in response to office action when arguing against 2(d) cites If third party has priority, you may want descriptiveness as a defense

Trademark PITFALL # 3 Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights30 Specimens. Specimens. Specimens!

Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights31 In order to achieve registration an applicant must show use of the mark in commerce through the filing of a specimen of record Specimen Must Be Included For Every Class in the Application

Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights32 Specimens for Goods: Must consist of a label, tag, or container or a display associated with the goods Can also be websites in certain circumstances Specimens for Services Can consist of advertising material

Beware Token Specimens Specimens must show actual use in commerce Cannot be “one off” printings of a single label Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights33

Scenario #3 Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights34 You Make It We Sell It specializes in retail sale of products ranging from clothing to toys to linens. As part of its IP strategy, it wants to file applications for the goods it sells, not just its retail services. Company files to register the mark WHAMMO across six different classes of goods of 50 goods per class.

For its Statement of Use, You Make It We Sell It includes a picture of a single label on one product in each Class. The Statement of Use was accepted and the mark registered They’re home free right? Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights35

Not So Fast… Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights36 Proof of use for all goods may be necessary in enforcement! Competitor could move to cancel registration for any goods not being used!

Scenario #3 - Revised Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights37 The mark that actually appeared on the label was WHAMMO! There is NO ISSUE from punctuation, right?

Little Changes Matter Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights38

Amendments May Be Possible Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights39 WHAMMO to WHAMMO! If the change is not “material” you may be able to amend the application to seek registration of the “altered” mark

Documentation. Documentation. Documentation. Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights40 Strategy for Specimens

Understand the importance of specimens and the rules in play Having the “hard” talk up front can save a registration in enforcement later on “Is this specimen really in use?” Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights41

Post Registration Process: Section 8 Filing (Renewal) Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights42 Between 5 th and 6 th Anniversary of Registration » Fee per class: $400 » Specimen of Use in the US » Declaration of Continued Use » Opportunity to Revise Protected Goods in Use » Grace Period for 6 months (additional fee: $100 per class) » Make sure Mark is same as Registration » Make sure Goods and Services are same as Registration

PITFALL # 4: Copyright Not filing for registration timely Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights43

Registration of a Copyright is not required for protection…. Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights44 BUT! Failing to file timely can have a lasting impact on lawsuits to enforce that copyright

Scenario #4: Copyright infringement? Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights45 Teri Holmes is a singer songwriter who writes a brand new song called “Teri’s Song” on January 1, She begins performing the song publicly and is getting a lot of attention and positive feedback. On June 1, 2013 she discovers a male artist named Johnny Mack is performing and selling a similar song called “Johnny’s Song.” She immediately files a state lawsuit against Johnny for copyright infringement. She files in State Court

What did Terri do wrong? Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights46 She didn’t file a Federal Registration before filing the lawsuit

Did You Know? A Copyright Registration is REQUIRED to Bring a Federal Lawsuit Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights47

Scenario #4 – Revised Has Terri done everything right now? Instead of filing in state court, Teri now files an expedited copyright application and then immediately files in Federal court. She claims statutory damages and attorneys fees under the Copyright Act. Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights48

No…. Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights49 She registered after she learned of the infringement and beyond 3-months after publication she cannot claim statutory damages or attorneys fees in her lawsuit.

Section 412 of the Copyright Act: No award of statutory damages or of attorney’s fees for … Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights50 Copyright infringement in an unpublished work … before the effective date of its registration Infringement… after publication and before registration, unless made within 3 months of the first publication. Therefore Can Only Be Claimed Where: 1)The work was registered prior to the infringement 2)Registered within 3-months of publication

Strategy for Filing Consider filing prior to publication or within the 3-month window to be safe If your work is getting “play” don’t let the 3-month window pass you by! Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights51

PITFALL # 5: Filing deposits with the US Copyright Office including confidential information Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights52 The Scenario: XYZ Corporation files a copyright application for the code to a piece of software it sells. The code incorporates certain coding that is considered to be a trade secret of the company. When XYZ Corporation uploads a deposit copy of the code, it does not incorporate any redactions.

By filing the deposit with the Copyright Office, XYZ Corporation destroyed its trade secret rights! Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights53

You must REDACT any confidential or proprietary information! Clients must understand where IP protections intersect! Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights54

PITFALL # 6: Copyright Not filing registration in the name of the right owner Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights55

Scenario # 6 Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights56 John Smith is a software engineer for Widgets USA, Inc. He writes a brand new software program for consumers to measure the effectiveness of the widgets in practice. Widgets USA, Inc. goes to the Copyright Office and mistakenly lists John Smith as the author and claimant.

Trouble Ahead… Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights57 Widgets USA, Inc. couldn’t enforce its copyright without its own software engineer being a plaintiff to the litigation!

Best Practice: Always Pay Attention to Ownership! Always pay attention to ownership! It can be just as troublesome where a company has an independent contractor do the work without transferring ownership in the end Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights58

Intellectual Property Webinar Series 59