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IP Updates

Trademarks and How to Use Them

January 22, 2010

IP Updates

Trademarks and How to Use Them

January 22, 2010

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Notebook Series

1. What is a trademark?

A trademark is a word, name, symbol, device, or any combination thereof, that identifies the goods of a manufacturer (or services of a provider) and distinguishes those goods or services from those of another. A trademark assures consumers of consistent quality with respect to those goods or services and aids in their promotion.

The term trademark is used to refer to a mark used on or in connection with a product. The term service mark refers to a mark used in connection with services.

2. Types of trademarks

Word Marks: GILLETTE, STEINWAY, DEXTER, BOSE

Design Marks: (BURGER KING) Hamburger Design, (KELLOGG’S FROSTED FLAKES) Tony the Tiger Design

Slogans: “WHO YA GONNA CALL,” “BRING OUT THE HELLMAN’S AND BRING OUT THE BEST,” “FROM SHARP MINDS COME SHARP PRODUCTS”

Initials and/or Numbers or Combinations: IBM, MGM, 3M, 7-UP

Nontraditional Trademarks and Service Marks

Product configurations: GOLDFISH Cracker Shape, PORSCHE 911 Automobile, AMERICAN CYANAMID Tablet Medication

Product packaging: COCA-COLA Bottle, PERRIER Bottle, RÉMY MARTIN Bottle

Sound Marks: NBC Chimes for entertainment services, MGM Lion Roar for entertainment services

Colors: In some instances, specific colors, by themselves, may be recognized as trademarks, such as Owens-Corning’s PINK for fiberglass products.

Scent: Scent may also serve as a trademark in certain instances. For example, a particular scent applied to lubricants used in motor vehicles is a registered trademark.

3. Strength of trademarks

Some terms are inherently distinctive and therefore make strong marks. Other terms are less distinctive and thus make weaker marks.

These are the basic trademark categories:

A. Coined

A coined term is one that is newly created and does not have any previously known meaning. Coined terms are the strongest trademarks from a legal standpoint. Examples: XEROX for copiers, KODAK for film, EXXON for gasoline.

B. Arbitrary

An arbitrary term is a common term having no apparent relationship to the goods or services with which the trademark is used. Such trademarks are also considered to be strong from a legal standpoint. Examples: GORILLA for boots and shoes, SHELL for gasoline products, APPLE for computers, CAMEL for cigarettes.

C. Suggestive

A suggestive term suggests, but does not immediately describe, a quality or characteristic of the goods or services. A suggestive trademark is not as strong from a legal standpoint as a coined or arbitrary mark, but can acquire strength through continuous use and promotion. Examples: COPPERTONE for sunscreen, HALO for shampoo, CHICKEN OF THE SEA for tuna.

D. Descriptive

A merely descriptive term describes a quality or characteristic of the goods or services. A merely descriptive term may only be a trademark if it “acquires distinctiveness” (also known as “secondary meaning”), which means that through substantially exclusive use of the term over a period of time, the term has come to identify a single source of goods or services. A merely descriptive mark that has acquired distinctiveness is typically considered a weak mark, although through widespread use and promotion the mark can enhance its strength. Merely descriptive terms are not registrable without a showing of acquired distinctiveness. Examples: SHAKE ‘N BAKE for bread crumbs, RAISIN BRAN for cereal, NU-ENAMEL for paint.

E. Generic

A generic term, i.e., a word commonly used to refer to the goods or services, cannot function as a trademark. Examples: camera, food processor, lawn mower, computer.

4. Unregistrable marks

U.S. trademark law prohibits registration of the following:

(a) terms that are immoral, deceptive, scandalous, disparaging, or that falsely suggest a connection with any person, place, or thing;

(b) representations or simulations of flags or other official insignia of any recognized country or state;

(c) the name, likeness, or signature of any living individual without his or her written consent;

(d) terms that so resemble a mark already registered in the U.S. Patent and Trademark Office that consumer confusion, mistake, or deception is likely to occur;

(e) terms that, when applied to the goods or services, are descriptive or deceptively misdescriptive, or primarily geographically descriptive or deceptively misdescriptive, of the goods or services; or

(f) terms that are primarily merely a surname. Surname and merely descriptive marks are registrable upon proof of acquired distinctiveness (five years of use, at a minimum, is typically required).

5. Selection of trademarks

The ideal trademark is simple, short, easy to pronounce, easily recognizable, and easy to remember. The following rules will aid in the selection of trademarks:

1. It is advisable to always conduct a thorough search to determine whether the proposed mark is available for use. This should be done as soon as a new trademark is proposed, and before any significant expenses (e.g., for development, advertising, or printing) are incurred. If a mark is adopted without a search having been done, and the mark infringes someone else’s trademark rights, it often becomes necessary to select a new trademark. This can be an expensive undertaking if a substantial investment has been made in the mark that must be discontinued. A costly lawsuit may also result.

2. If a trademark is being proposed in the United States, the first priority is generally to see whether the mark is free for use and registration here. Briefly, a typical trademark search proceeds as follows (your trademark counsel may suggest a modified strategy tailored to your particular needs): First, a quick “knockout” search of federal and state trademark registers is performed. If the mark survives this initial screening, a broader preliminary search can be conducted, using a variety of sources, e.g., trademark and other databases relevant to the goods or services to be offered under the trademark, related online and printed trade directories, trademarks currently in use by competitors, information from the company’s sales force on any competing products with similar names, and the Trademark Register. If no conflicts are identified, a full search through a specialized trademark search agency should be considered, to provide a more comprehensive look at federal and state registers and to look at marks that are in use in your particular industry but not registered. Your trademark counsel will review the search results and provide a recommendation as to availability of the proposed trademark for use and, possibly, registration in the United States. Of course, a search cannot guarantee that a proposed mark is not being used by another, nor that it does not infringe the rights of another, but it does provide some assurance that such is the case, and further provides evidence that a mark is adopted in good faith.

3. Making sure a trademark is clear for use internationally is becoming increasingly important in today’s global marketplace, but obviously this is a more difficult and expensive proposition. A preliminary international search can be conducted by computer to scan the registers of more than 34 (mostly European) countries and Japan. Specialized trademark search agencies can also perform worldwide or regional scans for virtually identical marks in the relevant industry. If a trademark is likely to be important for your company on an international scale, it is advisable to consider having the mark fully searched and commented upon by trademark attorneys in key countries of interest before a decision is made to adopt the trademark.

4. Your trademark counsel can assist in selection of a trademark. While coined or arbitrary marks make the best trademarks, suggestive or descriptive marks can also be made more distinctive (e.g., by adding an original design element, stylizing the lettering, adding or deleting words, etc.).

6. Acquiring rights to a trademark

1. In the United States, rights in a trade-mark accrue through use of the mark, and it is not necessary to register a trademark to develop rights in the mark, although registration does provide certain advantages. In some British law countries, e.g., the United Kingdom and Canada, rights can similarly be acquired through use.

2. U.S. trademark rights can be acquired when goods bearing the trademark are sold or shipped to a customer or potential customer in interstate commerce, or in foreign commerce with the United States. The shipment need not involve a sale; a shipment of goods bearing the mark to a potential customer, or a display of goods in association with the mark at an out-of-state trade show, may suffice. However, the mark must be used in the normal course of business; token shipments made solely for the purpose of establishing rights in a trademark are not sufficient, e.g., the shipment of goods may not be internal-for instance between two offices of the company. The mark may be applied directly to the goods, it may be affixed to labels or packaging containing the goods, or it may be in the form of shelf talkers or the like displaying the mark in close association with the goods for sale. A service mark is used when the mark is used or displayed in the sale or advertising of services and the services are rendered in commerce. Care should be taken to safeguard the first-use documentation, such as invoices, by sending copies to your trademark counsel. This evidence of the date on which trademark rights were acquired can sometimes become important in litigation or other disputes.

3. U.S. trademark rights may also be acquired on the basis of a bona fide intent to use a trademark in commerce. U.S. trademark law allows filing of an application for registration of a trademark on the basis of intent to use the trademark (an “ITU” application). However, the trademark will be registered only after it is established that the trademark is in use in the normal course of business. Once the mark is registered, the filing date of the ITU application is treated as the constructive first date of use of the trademark. This means that the ITU applicant has a position superior to that of a third party using the same or a similar trademark after the ITU application filing date, even if use by that third party predates first use of the trademark by the ITU applicant. It is important, however, that the ITU application cover the trademark and the goods as actually used, because significant changes in the trademark and/or in the description of goods and/or services in the application are not permitted after an application is filed.

4. In almost every country but the United States, including the British law countries, the key to obtaining rights in a trademark is registration in that country. The first to apply for registration of a mark is usually awarded rights. Accordingly, it would be ideal to register an important trademark in every country of the world as soon as a decision is made for launch of the product or service. However, this is only financially feasible for larger corporations.

Because the United States is a signatory to an international treaty called the Paris Convention, applications filed in other member countries within six months of the U.S. filing date will be given priority as of the U.S. filing date. It is possible to file applications in other countries at any time after this date, but they will not be able to claim priority.

5. In most regions of the world, the filing of applications for registration of a trademark is essentially accomplished on a country-by-country basis. An exception is found in Europe, where the European Community Trademark offers the possibility of obtaining registration of a trademark in all the countries of the European Economic Community with a single application, with use in a single member state being sufficient to maintain registration in all member states. Although costs vary, as a rule of thumb a company can expect to spend an average of U.S. $2,500-$3,500 per mark per country, provided the registration process goes smoothly and without opposition from third parties. The cost for a European Community Trademark is typically equivalent to that of about three single-country applications.

U.S. applicants may also consider filing for trademark protection by applying for an International Registration under the Madrid Protocol. The application may be based on a U.S. application or registration, including Supplemental Register registra-tions, and is filed electronically with the U.S. Patent and Trademark Office (PTO). The PTO certifies the application and forwards it to the World Intellectual Property Organization (WIPO). Convention priority may be claimed in Paris Convention countries if filed within the six-month term. Applicants may designate any or all of the over 70 member countries, as well as the European Union. If minimum filing requirements are met, an International Registration is issued by WIPO and the application is then forwarded to the national trademark offices in the designated countries for examination. Individual national trademark offices that approve the mark will then grant protection equivalent to a national trademark registration. The costs of applications for International Registration vary depending upon the identity and number of countries designated and the number of classes claimed. Because the application for International Registration in multiple countries may be filed in one document in one place, without the need for local associates, powers of attorney, or priority documents, there can be significant cost savings. However, it is important to note that these Madrid applications are tied to the U.S. basic application/registration for a period of five years, so an International Registration will be canceled if during the first five years following the date of the International Registration, the basic application is refused, withdrawn, or canceled. Counsel should be consulted on the pros and cons of filing for International Registrations under the Madrid Protocol.

6. As a compromise to filing everywhere at once, many companies initiate a staggered trademark filing program. For instance, if a product will be introduced initially in Europe and then introduced in Pacific Rim countries the following year, a company may first initiate a European filing program and then later initiate an Asian filing program.

7. A planning consideration: It doesn’t always pay to initiate a filing program too far in advance of the introduction of a product or service into a country. Many countries require use of a trademark within a limited period of time following registration (usually three or five years). A trademark not put into use in that time can thereafter be vulnerable to cancellation by third parties interested in obtaining rights in the mark for themselves.

8. Another planning consideration: It is advisable to take early steps to register the trademark in countries where goods will be manufactured, even if only for import, in order to establish clear ownership rights in the mark.

9. A further planning consideration: It is also advisable to take early steps to register the trademark in countries where the mark may be licensed or where there may be distribution agreements for goods sold under the mark, in order to establish a record as to ownership of the trademark between the trademark owner and any licensees or entities with distribution rights.

7. Proper trademark usage

Once exclusive rights in a trademark have been established, those rights must be protected by proper use. The following practices are recommended:

A trademark should always be highlighted by display in capital letters or in italics so that it is easily distinguishable from other words in close proximity. Example: STEINWAY Pianos.

2. Notice of trademark rights should always accompany the first or most prominent use of a trademark on the product, in advertisements, etc. An unregistered trademark can be followed by the superscripted letters “™” to give notice that the company claims trademark rights in the term. A U.S. registered trademark in use in the United States should always be followed by the symbol ® to identify the term as a registered trademark. However, if a product will also move in international markets in the same packaging, another form of notice should be considered, e.g., “Reg. U.S. Patent & Trademark Office” or similar, since the symbol ® is statutory notice of registered rights in other countries as well. In advertising copy, notice of trademark rights may be provided in a footnote format, e.g., by placing an asterisk adjacent to the mark and placing an appropriate notice at the bottom of the page on which the asterisk appears. An example of a notice at the bottom of a page: *IBM is a trademark of International Business Machines, Inc.

3. A trademark should never be used as a noun, but must always be used as an adjective. Example: Buy BAND-AID bandages for your scrapes and cuts. Not: Buy BAND-AIDS for your scrapes and cuts.

4. A trademark should never be modified or used in a different form, for example, through hyphenation, combination, or abbreviation. Example: WHAM-O should never appear as WHAM O or WHAMO.

8. U.S. registration

In the United States, ownership of trademark rights does not stem from registration. Trademark rights are acquired when a mark is used in connection with a product shipped or a service offered in interstate commerce. However, registration is beneficial in the following ways:

1. U.S. federal registration is prima facie evidence of a valid trademark, denoting the registrant’s ownership of the mark and its exclusive right to use the mark in connection with the goods or services for which it is registered.

2. A registered trademark is more likely to appear in a search report, and this may dissuade third parties from adopting a mark that is identical or confusingly similar to the registered mark.

3. The U.S. Patent and Trademark Office may refuse to register a third-party mark on the basis of a prior registration, thus reducing the likelihood that a costly opposition or other proceeding will be necessary in order to protect exclusive rights in the registered mark.

Once a registration is granted, it can be maintained as long as the mark is used in connection with the goods or services for which it is registered. Periodic proof of use must be filed with the U.S. Patent and Trademark Office in the form of a declaration of use (between the fifth and sixth year of the registration term) and thereafter at the time of renewal (prior to the expiration of the term initially granted, which is 20 years for marks issued or renewed prior to November 16, 1989, and 10 years for marks issued or renewed thereafter).

9. Prerequisites for applying to register a trademark

A formal application to register a trademark must include:

1. Name and address of applicant;

2. Name and address of individual to whom all official correspondence should be sent;

3. A drawing showing the mark as it is intended to be registered (in the case of a word mark, the drawing may be in block- or typed-letter form to obtain the broadest scope of protection for the verbal element or may depict the mark exactly as used, if the mark includes important design elements);

4. A list of the goods and services with which the mark has actually been used and/or is intended to be used;

5. If the application is based on use, the date on which the mark was first actually used and the date on which the mark was first actually used in interstate commerce (if it is not possible to determine these dates precisely, approximate or “at least as early as” dates may be given). Also, an ITU application may be filed for a mark that is actually already in use, e.g., where the date of first use has not been determined. Claims of use and non-use basis for filing may be combined in a single application, and the basis for filing may later be changed upon petition;

6. If the application is based on actual use, a specimen showing the mark as actually used with each class of goods and/or services;

7. A check in the amount of the official fee.

An application may be filed electronically or by exchange of facsimiles. It is not necessary that an application be signed prior to filing.

10. Avoiding loss of a trademark due to genericness, dilution, or abandonment

1. A mark is generic if it becomes the com-mon name by which a product or service is identified and thus no longer identifies the source of a particular product or service. The terms aspirin, zipper, escalator, and cellophane were once registered trademarks but, through misuse, lost trademark status and passed into the lexicon to become generic terms. Loss of trademark rights can be avoided by taking the following precautions:

(a) Always use trademarks properly as described above. The requirements of proper use are not confined to packaging and advertising; trademarks should also be used correctly in press releases, corporate price lists, and all intra-corporate documents. To ensure that company trademarks are used correctly and uniformly, all advertising copy and proposed trade dress and packaging should be reviewed for proper trademark usage, and trademark counsel should be consulted concerning any usage questions that arise.

(b) Trademark counsel should be notified of any misuse appearing in publications or in the marketplace, so that it can be corrected.

(c) The public should be educated with respect to company trademarks and consideration given to running advertisements in trade and consumer publications emphasizing, for example, that XEROX is a trademark and not a synonym for, among other things, photocopying equipment.

2. When third parties use a trademark similar to a company mark, dilution of the company mark can result, causing the eventual erosion of the distinctiveness of the company mark.

3. When a trademark owner ceases to use a trademark without intent to resume use, abandonment of the mark results. Usually, a mark is considered to be abandoned when it is out of use for two years. In order to safeguard against legal abandonment of a trademark, if shipment of goods bearing a particular trademark is temporarily discontinued for any reason, a bona fide intent to resume such shipments should be documented in writing and maintained by trademark counsel. It is imperative to remember that failure to take proper precautions can result in the permanent loss of a trademark and its subsequent rightful adoption by another.

11. Enforcement

A trademark owner has the obligation to enforce its trademark rights against others to keep those rights alive. If the trademark owner does not take action against an infringement, rights in the mark could be significantly eroded. All marketing and sales personnel should be on the alert for possible infringement of their company’s trademark rights and should bring any such information to the attention of trademark counsel. For an annual fee, a trademark owner can also subscribe to one of several available watching services that will monitor national and international trademark registers and issue an alert to applications seeking to register identical or closely similar marks anywhere in the world, typically in time to oppose registration.

12. Conclusion

Strong trademarks are invaluable corporate assets and must be protected. All personnel are encouraged to actively assist in protection of company trademarks by following the suggestions in this outline and by contacting trademark counsel whenever questions arise.

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