Apparel manufacturer owning registration for ALL IN sues Dallas Mavericks.
StarBuzz seeks declaration that its CITRUS MIST tobacco for hookahs (and e-cigs) doesn’t infringe Hershey’s CITRUS MIST mark used for breath-savers.
INTA amicus brief on whether LADY GAGA is registrable as a trademark for class 9 recorded music, in Japan.
NB: This decision is dated March 20. Plaintiff has now withdrawn its case.
This is a somewhat typical fact pattern – a small company owns a not-so-unique mark. A large company appends its famous housemark to the weaker term.
Plaintiff here owns a federal registration for FUEL for apparel. It has had a low but constant level of revenue since 1992. It shares the register with many FUEL-variants. It runs into enforcement problems often and has even litigated several times, resulting in coexistence agreements (see more below).
Nike adopted the NIKE+FUELBAND trademark for a wearable electronic device to measure various fitness metrics (although NIKE did use FUEL without the NIKE mark, there doesn’t seem to have been extensive trademark use by Nike of FUEL per se). The product is sold primarily if not exclusively in Nike and Apple stores.
Nike prevails at summary judgment. The mark FUEL wasn’t all that strong. The NIKE mark and the -BAND element diminished confusion (but see cases that hold that appending a housemark doesn’t alleviate confusion). Nike sold its products in a walled garden of Nike and Apple stores.
Bonus aggravation for Plaintiff: Nike alleged that Plaintiff’s various consent agreements were naked licenses (and, if that allegation was proven, the mark could be deemed abandoned). In the world there are license agreement, consent agreements and fake agreements that are deemed to be naked licenses (agreements that are somewhat deceptively refer to as license agreements but licensor exercises no true quality control over licensee). The decision does a pretty good job of clearly defining these situations and indicating why Plaintiff’s coexistence agreements were not naked licenses. I think this is just an instance of Nike playing a full-court press.
In summary, it is hard to imagine someone buying a NIKE+FUELBAND mistakingly thinking that the product was connected to Plaintiff. It is also hard to imagine someone buying Plaintiff’s FUEL apparel thinking that it was somehow connected to Nike.
To the extent that Plaintiff is damaged by Nike, it might be that the already weak FUEL mark is pushed further toward not functioning as a brand, as a result of Nike’s appropriation of the term. In a way, that can be referred to as reverse dilution. However, FUEL is not a famous mark, and reverse dilution is not actionable under the Lanham act.
Does anyone want to point to the best argument why a trademark office should accept only single class applications? Seems to needlessly drive up expenses in most instances.
Client had a bunch of applications published (in a country that isn’t the U.S.). The publication details on all of them were truncated due to a mistake by that country’s trademark office. We are advised that if allowed to issue, the resulting registrations are vulnerable to cancellation because of the incomplete publication (on the theory that third parties were denied the complete information necessary to oppose). We are advised to file a motion to re-publish (which isn’t free).
Any of you guys experience this, ever?
Corporate America: Get Your Ducks In A Row! 10 Easy Steps to Increasing Shareholder Value with Soft IP
Partner, Leason Ellis LLP, White Plains, NY
Inside corporate counsel have plenty of work on their desks. The last thing they are looking for is yet more work. Still, trademarks and other intellectual property are increasingly important as corporate assets. Shareholders routinely consider the value of IP in assessing the strength or weakness of a business. In addition to tackling their day-to-day legal work and putting out fires, in-house counsel should look for ways to streamline and leverage their soft IP assets (i.e., trademarks and copyrights). The following is a list of ten possible steps to consider taking before year-end:
1. Register Your Trademarks
Registering trademarks is the bread and butter of most inside trademark counsel. However, many companies are not large enough to hire dedicated trademark counsel. Corporate counsel at those companies should undertake review of the company’s brands and determine whether any additional trademark filings are warranted. Secondary marks, logos, sound marks, colors and product configurations are just some of the myriad kinds of trademarks available for registration.
In addition to protecting trademarks in the U.S., it is important to protect marks in countries abroad where products are made, where goods area sold (or services rendered), and where counterfeiting may occur. An initial investment in trademark protection can be amortized over the years of registration and is less expensive than paying off a squatter or dealing with infringement litigation.
Building a portfolio of registered trademarks, and providing notice of those registrations in advertising and promotional material (i.e., ABC is a registered trademark of Xyz, Inc.) signals to the outside world that the company is trademark savvy. It is also an assuring sign to potential buyers of the company or its assets that they need not worry as much about the risk of infringement (and seek to retain funds in escrow as a reserve for a claw back provision in the event of trademark litigation).
2. Order a Watching Service
Trademark searching before adoption and filing is all well and good, but searching is retrospective rather than prospective. For the leading brands of a company, inside counsel should consider ordering a watching service, which provides advance notice when confusingly similar marks are published for opposition and affords the opportunity to object to registration.
Do not make rely upon government trademark offices to refuse registration of confusingly similar marks. Many do not even examine applications for confusing similarity. For examine, OHIM, the trademark office of the European Union, does not examine applications on so-called relative grounds. It is, therefore, possible to have two EU registrations for the same mark for the same goods owned by different and unrelated parties. It is the duty of the trademark owner to be vigilant and oppose registration of a confusingly similar mark.
Watching services are relatively inexpensive. Leading trademark research companies like CT Corsearch, Thomson Reuters and CSC Nameprotect offer a variety of different watching options. Also consider using them to watch other soft IP assets like domain names and trade names.
3. Develop Trademark Style Guides
Trademarks, particularly new ones, are like babies in that they need care and nurturing to develop to their full potential. Without proper guidance, they may develop bad habits and become wayward in their activities. That is where a trademark style guide comes in handy.
A trademark style guide illustrates the proper way to use a trademark and includes instructions ranging from the proper font and type size to the affixation of trademark notice. The consistent use of a trademark maximizes its value and reduces the chance of collateral attack by third parties.
Many graphic designers specialize in creating trademark style guides. Each company has its own history and different brand needs, so it is necessary to work hand-in-hand with the designer, preferably in consultation with a trademark lawyer, to develop a style guide uniquely suited to meet the specific needs of the business. Then, continually familiarize new marketing people with the guide so that it becomes an important tool rather than a relic gathering dust (or residing unnoticed on an intranet).
4. Develop Internal Clearance Forms
Whoever handles the legal trademark function for a company should advertise that fact internally so that marketing and others who may create brands know whom to contact before taking any public steps. If employees act unilaterally when it comes to trademark adoption, searching, or filing, it will lead to inconsistent practice, increased expense, and added risk exposure.
Develop trademark clearance forms and distribute them throughout the company (an effective way to centralize a trademark practice). The forms should include key metrics like the mark to search, the reason for selecting the mark, the goods or services of interest, the countries where the mark may be used, and the lead time before commercialization.
Post trademark clearance forms on a corporate intranet to make them readily available for widespread use. Beyond that, periodically notify businesspeople about the availability of the forms, especially as marketing people may turn over fairly regularly.
5. Beef Up the Copyright Portfolio
Copyright is an often-overlooked area of intellectual property protection. Most companies likely have scores of materials entitled to copyright registration. Adding copyright registrations to an IP portfolio is an easy way to establish and measure company assets. At the very least, it is another schedule of assets to attach to merger and acquisition documents, thus evidencing the tangible value of the assets transferred.
Materials amenable to copyright registration include a company website, its advertising and promotional materials, its product packaging, and the like. Recordation with the U.S. Customs and Border Protection is even available if counterfeits or gray goods are an issue.
The U.S. Copyright Office charges only $35 for an application and the filing requirements are minimal. U.S. copyright law encourages early and often filing as statutory damages and attorneys’ fees are only available if an application is filed within three months of publication or before infringement. Also, if the nature of the works change over time, keep in mind the possibility of filing for derivative works to protect newly added material.
One last point to remember about copyright – it is international in scope and immediate in efficacy. You may be able to enforce copyright in, for example, your packaging in a jurisdiction where your trademark applications are still pending.
6. Clean Up Chain of Title Issues
Nothing causes more problems in due diligence than a messy chain of title. There is no time like the present to review trademark applications and registrations to make sure that the chain of title is clear and current.
Make sure that it is possible to trace an understandable chain of title from the current record owner back to the applicant. Assignments nunc pro tunc can be used to fill in gaps, particularly when a prior owner is no longer in business. Also, check with secretary of state records to ensure that the current owner is still an active business entity.
Unreleased security interests are another problem when it comes to due diligence. Most people remember to record security interests against trademarks, but fewer remember to record the release of the security interest down the road.
7. Centralize Agreements And Review Any Licenses
Hard as it may be to fathom, some trademark settlement agreements and co-existence agreements are effectively put in a drawer (literally or proverbially) and forgotten once signed. The mark of an effective trademark practice is to consolidate those agreements in one location so that they can be consulted when needed in the future.
In the past, one could maintain a binder of trademark related agreements. Since most everything is electronic these days, it is more important than ever to main those agreements in an easily accessible electronic format. Some trademark docketing programs even have modules to record trademark agreements.
Where the number of agreements is manageable, it may even be worth reviewing them fresh. Among other things, the other side may have gone out of business or discontinued using its mark. This may result in termination of a co-existence agreement, resulting in one less issue for inside corporate counsel to worry about.
8. Rationalize Outside Counsel Relationships
As companies acquire and divest one another in whole or in part, trademark portfolios come and go. There is often different trademark counsel associated with those portfolios, especially in foreign jurisdictions.
The well-run trademark practice will seek to consolidate those portfolios in one or two counsel in each country. Some companies like to have favored prosecution counsel and preferred litigation counsel. Others will seek to have a back up in case of any conflict of interest.
Consolidating trademark portfolios is a good way to make sure that there are a limited and manageable number of counsel who are familiar with the company and its trademarks. Those outside trademark attorneys can often serve as the eyes and ears of the company on the ground in spotting infringements and recommending steps to better protect the company’s marks.
9. Maintain Evidence Of Fame And Use
Even where marks are famous, courts and trademark offices require proof of fame. It behooves the owner of a famous mark to maintain a record documenting that reputation. The fame file should include documents evidencing the adoption of the mark, the history of use of the mark, advertising and promotion of the mark, and consumer recognition of the mark.
Beyond maintaining a fame file, it is good practice to draft an affidavit of fame. That affidavit can be used in actions around the world and modified as necessary.
Time passes quickly and evidence of fame today may grow stale tomorrow. Consider docketing a future date to review and refresh evidence of reputation. Also, gather evidence across jurisdictions where marks are used outside the U.S.
One last point about fame files: ‘bookmarking’ services such as Instapaper make it easier than ever to keep a clipping file (but don’t forget to save electronic copies – the Web is ephemeral).
10. Develop An IT Policy
Today, electronic discovery is part and parcel of traditional paper discovery in any U.S. litigation. It is generally accepted that electronic discovery represents the most significant cost of the litigation process.
The value of trademarks is lessened if it is too expensive to enforce rights. As a result, it is essential that corporate counsel develop an electronic discovery plan in advance of litigation.
Identify key custodians of trademark related information and documents, and identify where such materials reside on corporate systems. With so many e-discovery vendors, it should be easy enough to find a vendor willing to assess needs and provide cost estimates. They are also often willing to come in and provide a CLE presentation.
There are plenty of other things that in-house corporate counsel can do to more effectively grow and protect their soft IP assets, from making sure that they are using the right docketing program, to establishing an effective domain name policy, to scouring social media for infringements. The above merely represents a sample list of actions to consider taking along the way. The important thing is to at least consider the various issues and to take one concrete step at a time. If you are looking for additional ideas, or if you have any questions, you can reach me at [email protected].
You’d be surprised by how many trademark infringement suits involve hookahs. For example.
This is a leaked memo from the Annual Meeting committee of INTA, three years from now.
Now that we’re back from Vienna, we want to thank the international annual meeting sub-committee for doing a bang-up job..
It has been suggested that we consider the ‘Pearl River’ super city of Guandong, etc. as the site of the 2024 INTA annual meeting. The remaining few of you who remember the 2014 Hong Kong meeting have expressed some reservations. However, as the Pearl River region alone has a population larger than any EC country, and accounts for 5% of the global economy, it seems that as part of INTA’s mission as a global brand association, we have to continue to hold meetings outside North America and Europe, especially in the epicenters of world trade.
The important lesson we learned from Hong Kong is to manage expectations and to help the attendees adapt to novel circumstances. We do that as legal practitioners for our clients, and we need to do that here. We also know that 10000 busy lawyers will not have time to digest long ‘how to’ articles before going, so to communicate effectively we have to boil down our message, for a successful conference in a Hong Kong-type locale:
1. DRESS DOWN
2. GET THERE EARLY TO LEARN THE TRANSIT OPTIONS
3. DRINK PLENTY OF LIQUIDS
We know from Hong Kong that attendees who were not used to the humidity of the rainy season, had trouble functioning. At a minimum, we have to communicate this effectively to the attendees, and note that there will be no dress code (other than basic decency) at this meeting. Not that attendees need permission to dress down, but the express encouragement of the conference organizer makes business people comfortable to show up to meetings in sandals and shorts.
We also learned that the humidity, in combination with the absence of sidewalks, made for an un-walkable city. Of course HK residents can get around on foot by playing a life-sized version of chutes and ladders in shopping malls, but it is difficult to learn that, when you’re running fifteen minutes late for an important meeting. We also saw that in the absence of the ability to walk between the more distant conference hotels and the convention center, and in the absence of INTA shuttles, that the attendees placed a severe burden on the cab system. So we have to (1) bring back the INTA shuttle bus and (2) communicate to attendees that they need to get to the conference a day or two early just to adapt to not only the time zone, but the climate, and to the transportation systems. And allow for delays when scheduling events.
It may even make sense that there are ‘moving’ orientation sessions on the Saturday, in which locals take attendees on walks, and on the public transit system.
And it’s always important to stay hydrated. (note to INTA sponsorship committee – approach Gatorade and Sportade?)
So to conclude: we have to continue to have annual meetings in China and other non-Western jurisdictions. But we have to prepare our attendees adequately for a different type of annual meeting, with a short but sweet advisory email. Otherwise we tarnish the INTA brand.
p.s. And again we have to remind law firms not to abuse the attendee list by sending mass e-mailings.