Trademark Law1  Sept. 25, 2006  Week 5 Finish Chapter 3 Start Chapter 4 (Registration of Trademarks  Reading: Pgs , suppl. pgs (suppl.; note deleted case(s))

Trademark Law2 Review - Priority of Use  General rule – first to “use”... wins! Use can be technical use, or Use can be constructive use (ITU), or Use can be analogous use  not technical, won’t support registration  but can create priority date

Trademark Law3 Review - Priority of Use  Technical use  First – [was there] adoption [by the mark owner]  Second – [was their] use in a way sufficiently public to identify or dist. the marked goods in an appropriate segment of the public mind as those of the adopter of the mark

Trademark Law4 Review - Concurrent Use  So, when two marks collide Prior user keeps their geography (can’t expand) Federal Reg. mark expands nation-wide (except for prior user’s geography) 15 U.S.C. 1115(b)(5) provides a so-called "limited area" defense  no knowledge of other use  local area market as of date of registration  continuous use

Trademark Law5 Review - Concurrent Use  Dawn Donut Rule – limits injunctive relief until registrant intends to expand The owner of a registered mark has a nationwide right, but the injunctive remedy does not ripen until the registrant shows a likelihood of entry into the disputed territory... [The junior user ’s ] use of the mark can continue only so long as the federal registrant remains outside the market area.  N.B. Dawn Donut not followed in all Cir. 4 th Cir. Emergency One v. American Eagle Fire Apparatus (4 th Cir. 2003) [Suppl. pg. 52]

Trademark Law6 Review - Intent to Use Apps No Trafficking in marks  Can’t “sell” ITU must use and file Statement of Use first, then sell the registration except to a successor to the business - in connection with the sale of the business assess and efforts related to the mark

Trademark Law7 Review - Intent to Use  ITU Applicant has right to perfect its mark  Trademark office can and does review ITUs for descriptiveness and other “flaws” during initial exam  TTAB can create a presumption in favor of the ITU Applicant that a mark is inherently distinctive

Trademark Law8 Fed Reg of Marks  Counseling Clients re selection, clearing, use, and protection of marks. Selection of mark  distincitve, non-functional, business issues, etc. Clearing a Mark with search  Before use  perhaps before filing ITU… Preliminary search (google, USPTO website, trade papers, trade shows, etc.) Professional search (obtain search report and analysis by attorney)

Trademark Law9 Counseling Clients To Adopt “Good Marks”  Examples of “Bad Marks” POCARI SWEAT for a Japanese drink does not sell well in English speaking countries. NOVA for an automobile translates to “doesn’t go” in Spanish. MIST STICK for a hair curling iron does not do well in Germany where “mist” is slang for “manure.”

Trademark Law10  More Examples of “Bad Marks” COCA COLA was given a similar sounding name in Chinese until it was learned that the name meant “Bite the wax tadpole.” PINTO for an automobile did not sell well in Brazil where “pinto” is a slang term for “tiny male genitals.” Gerber baby food with the famous trade dress having a cute baby on the label did not sell well in Africa where it is common practice to put pictures of the contents on food labels. Counseling Clients To Adopt “Good Marks”

Trademark Law11 Fed Reg of Marks  Federal Registration of Marks File application  Use based; or  Claiming a bona fide intent to use (ITU)  Application examined language used to describe the goods/services any other prior applications or use that this applied for mark would cause a likelihood of confusion with All other formalities of the application are in order If OK, then application is published for opposition

Trademark Law12 Fed Reg of Marks  After published, opposition period begins 30 days for any party who believes it may be damaged by the registration to oppose Additional requests of time extensions up to 180 days  Assuming no opposition is filed, applicant has 6 months to file a Statement Of Use 6-month extensions of time available up to additional 2 yrs  Once the Statement Of Use if filed the mark is registered  Which means the priority date springs back to the filing date (not the first use date).

Trademark Law13 State & Foreign Applications  Consider filing state registration (helps with dilution claims; later on)  Consider filing foreign registrations which claim the benefit of US filed applications (and vise-versa)

Trademark Law14 Advantages of Registration  Nationwide protection from the date of the application  Prevents senior users in limited geography from expanding their territory  Incontestability if used for 5 yrs (and paperwork filed with USPTO)  Stop infringing goods at the dock  Mark is presumed valid during litigation  Get to use that really cool ® symbol

Trademark Law15 That really cool ® symbol  “… a registrant of a mark registered in the Patent and Trademark Office, may give notice that his mark is registered by displaying with the mark the words ''Registered in U.S. Patent and Trademark Office'' or ''Reg. U.S. Pat. & Tm. Off.'' or the letter R enclosed within a circle, thus ®…” 15 USC § 1111  It provides constructive notice the mark is registered  But note… Once a mark is registered…: “and in any suit for infringement under this Act by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the [the act] unless the defendant had actual notice of the registration.” Id. So… don’t use ® if not registered, and better use it if it is registered  Contrast with TM; used for unregistered trademarks or SM for unregistered service marks.

Trademark Law16 Madrid Protocol  The US and 49 other countries  Allows applicants in “member countries” to extend their registrations to other member countires (including the US and vis-versa)  Mark owner can select which countires will extend rights into  international reg. date is constructive first use  ITUs and Statements of Use

Trademark Law17 Types of Mark  Trademarks 15 USC § 1052 Lanham Act §2  Service marks 15 USC § 1053 Lanham Act §3  Collective marks (see pg ) 15 USC § 1054 Lanham Act §4  Certification marks 15 USC § 1054 Lanham Act §4

Trademark Law18 Bars to Registration  15 USC § 1052(a) - No mark shall be refused registration… unless  it is immoral, deceptive, or scandalous matter; or  [it is] matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after [Jan. 1, 1995]

Trademark Law19 Bars to Registration  Scandalous / immoral bars to registration Examiners know it when they see it In Re Bad Frog Brewery, Inc.

Trademark Law20 Bars to Registration  May disparage Pro-Football, Inc. v. Harjo (D.D.C. 2003) [Suppl pg. 49].  Rule: within the relevant time periods an identifiable group (or institutions or beliefs) the mark as actually used, in relation to applicant’s goods / services May be disparaging of the group

Trademark Law21 Standing to Challenge a Registration  Oppositions are filed with the TTAB Admin. Agency – so no Case or Controversy requirement judicially-created test:  Real Interest Test  Reasonable basis for belief of damage

Trademark Law22 Bars to Registration  Refusal based on 15 USC § 1052(b) – flags or coat of arms or insignia of the US, any State or muni, or any foreign nation, or any simulation thereof  Refusal based on 15 USC § 1052(c ) – Names, portrait or signatures (live people or dead presidents [while the widow still lives])

Trademark Law23 Bars to Registration  Refusal based on 15 USC § 1052(d) resembles a mark (registered or not) that the applied for mark would likely to cause confusion with as used or as intended to be used

Trademark Law24 Bars to Registration  15 USC § 1052(e) - Cannot register a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registerable under section 4 [15 USC §1054] (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.  15 USC §1052(f) - except for §1052(a), (b), (c), (d), (e)(3) and (e)(5)... all of the other rejections may be overcome by proving the mark has become distinctive (a.k.a. acquired secondary meaning) to the examiner.

Trademark Law25 Bars to Registration  15 USC § 1052(e) - Cannot register a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them Must acquire 2 nd meaning for mark to be protectable; See §1052(f)

Trademark Law26 The Budge Test Compare and contrast… 15 USC § 1052(a) – bars deceptive terms – complete bar (not even 2 nd meaning will allow registration 15 USC § 1052(e)(1) – bars merely descriptive terms or deceptively misdescriptive terms – (but 2 nd meaning will allow registration) How to tell the difference? 3-step test on p. 253

Trademark Law27 Registration of Marks  15 USC § 1052(e) - Cannot register a mark which (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registerable under section 4 [15 USC §1054] Must acquire 2 nd meaning for mark to be protectable; See §1052(f)

Trademark Law28 Registration of Marks  15 USC § 1052(e) - Cannot register a mark which (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them 2 nd meaning won’t help; See §1052(f)

Trademark Law29 Registration of Marks  15 USC § 1052(e) - Cannot register a mark which (4) is primarily merely a surname  Rule: is the "primary significance of the mark to the purchasing public" as that of a surname? Factors (i) the degree of surname rareness; (ii) whether anyone connected with applicant has the surname; (iii) whether the term has any recognized meaning other than that of a surname; and (iv) the structure and pronunciation or “look and sound” of the surname. Must acquire 2 nd meaning for mark to be protectable; See §1052(f)

Trademark Law30 Registration of Marks  15 USC § 1052(e) - Cannot register a mark which (5) comprises any matter that, as a whole, is functional. A product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. 2 nd meaning won’t help. See §1052(f) Balance this w/ patent law

Trademark Law31 Some Notable Merely Descriptive Marks Numbers, letters, model numbers  General rule: Not distinctive – not registerable  How to protect these marks? Acquire 2 nd meaning A grade or style designation may be distinctive, IF it also primarily designates the source of the good.  If not… how to protect these marks? Acquire 2 nd meaning

Trademark Law32 Next Week  No class – take the day off  Then... on Oct. 9 th  Chapter 5 – Loss of Trademark Rights