Key Principles of Trademark Law and Unfair Competition Practicing Law Institute San Francisco June 24, 2016

Vineeta Gajwani Senior Counsel,

Electronic Arts Inc.

Blackhorse, et, al. vs. Pro-Football, Inc, (T.T.A.B. June 18, 2014), In re: Tam, No. 2014-1203 (Fed Cir. 2015)

I. Introduction

Trademark Law

In combination with Copyright, Patent, Rights of Publicity, Trade Secret Rights

Basis for federal courts in commerce clause not Article I, Section 8, which is the basis of congressional grant of rights in copyrights and patents

What are Trademarks?

Trademarks are source identifiers

– Usually a word, symbol, or phrase, but it can also be a shape, design, color, smell, taste or even a sound.

Trademark owners have the exclusive right to use that word, device, symbol with certain goods and services.

Trademark rights are territorial – limited to a specific territory.

IF IT’S IN THE GAME, IT’S IN THE GAME

Do you think this product raises: A. copyright questions only?

B. trademark questions?

C. both?

II. Is a Trade Name a Trade Mark?

Trade Name signifies the goodwill in an enterprise as a whole.

–Corporate, business and professional organizations are called trade names

Infringement similar to trademark

The likelihood of confusion

Trade Names cannot be registered

Corporate name formation does not confer rights to Trade Mark

Wheaties, Inc. does not obtain rights to WHEATIES

E.I. de Nemours and

Company DuPont

International Business Machines, Corp.

III. Domain Names and Trademark Rights

Domain Name acquisition does not confer rights to a Trade Mark

Wheaties.com does not obtain rights to WHEATIES

The Internet

Does a Domain Name function as a Trademark?

Does using another’s mark in a Domain Name infringe on the Trademark?

IV. Definition of Trademarks and Service Marks

Those words, symbols, phrases or designs which the public associates with a single source of goods or services. Trademarks - single source of goods

Service marks - single source of services

Trade Dress

Federal Law Lanham Trademark Act of 1946

State Law The Model State Trademark Bill

What is the Mark in the following

slides?

Trademark Design Only

Design Type DESIGN WITH

WORD(S)/LETTER(S)/STYLIZED

Database U.S. Federal

Application Number 78258712

Registration Number 2904858

Status SECTION 8 & 15 ACCEPTED

(REGISTERED)

Trademark Design Only

Design Type DESIGN & WORD(S)/LETTER(S)

Database U.S. Federal

Application Number 75450053

Registration Number 2835657

Status SECTION 8 & 15 ACCEPTED

(REGISTERED)

Trademark Design Only

Design Type DESIGN ONLY

Database U.S. Federal

Application Number 74494466

Registration Number 2437751

Status RENEWED (REGISTERED)

Trademark Design Only

Design Type DESIGN ONLY

Database U.S. Federal

Application Number 74494463

Registration Number 2437750

Status RENEWED (REGISTERED)

This is a clan plaid. Is this a trademark?

A. Yes

B. No

Design Type DESIGN ONLY

Database U.S. Federal

Application Number 77209954

Registration Number 3529814

Status REGISTERED

Section 2(F)

V. What Constitutes “Use” of a Trademark?

Lanham Act “Use in Commerce” is “the bona fide use of mark in the ordinary

course of trade, and not made merely to reserve a right in a mark” Section 45. Exception is an intent to use filing. Section 44.

No Trade, No Trademark.

Use Place on the goods or their containers and,

Goods are sold or transported for sale.

Registration of a domain name is not “use.”

Is there a valid trademark?

A. Yes

B. No

If so, is it on both products?

A. Yes

B. No

Is there an infringement?

A. Yes

B. No

Is there a valid trademark?

A. Yes

B. No

If so, is it on both products?

A. Yes

B. No

Is there an infringement?

A. Yes

B. No

Makers Mark Distillery, Inc. v.

Diageo N. Am., 679 F.3d 410 (6th

Cir. Ky. 2012).

-Yes

Christian Laboutin S.A. v. Yves

Saint Laurent Am. Holding, Inc.,

696 F.3d 206 (2d Cir. N.Y. 2012).

-Yes and No

Trademark Selection

2 Goals:

1. Select a mark that is available and clear

2. Select a mark that is strong and protectable

3. Registrable

Selecting a Mark

Spectrum of Distinctiveness

Generic

– The mark is the word for the product or service itself (e.g. new brand of coffee called LATTE coffee.)

–Generic marks are unprotectable

Highly protectable

Not protectable

Generic Descriptive Suggestive Arbitrary Fanciful

Generic Trademark Examples

Aspirin

Escalator

Cellophane

Thermos

Videotape

Margarine

Trampoline

Spectrum of Distinctiveness

Descriptive

– The mark describes some quality of the goods/services such as its color, odor, function, dimensions, ingredients, etc. (e.g. ALL BRAN for cereal, HOLIDAY INN for hotels)

– Descriptive marks are weak and not registrable unless “acquired distinctiveness” or “secondary meaning”

Highly protectable

Not protectable

Generic Descriptive Suggestive Arbitrary Fanciful

Descriptive Trademark Examples

American Airlines

Quick-print

Holiday Inn

Kentucky Fried Chicken

Bank of America

Spectrum of Distinctiveness

Suggestive

– The mark suggests a characteristic about the goods/services, but doesn’t describe the product (e.g. GOBBLE GOBBLE for turkey meat, COPPER TONE for sun tan lotion)

– Suggestive marks are considered strong and are both protectable and registrable

Highly protectable

Not protectable

Generic Descriptive Suggestive Arbitrary Fanciful

Suggestive Trademark Examples

Linkedin

Opentable

Greyhound

Facetime

Grubhub

Snapchat

Waze

Spectrum of Distinctiveness

Arbitrary

– The mark is commonly known but not used for its meaning. (e.g. APPLE for computers)

–Arbitrary marks are very strong. Very high degree of protection.

Highly protectable

Not protectable

Generic Descriptive Suggestive Arbitrary Fanciful

Arbitrary Trademark Examples

Twitter

Uber

Apple

Yahoo

Pandora

Nike

Tide

Spectrum of Distinctiveness

Fanciful

– The mark is a made-up word/words (e.g. EXXON for gas, KODAK for cameras, CLOROX for bleach)

– Fanciful marks are the strongest types of trademarks. Highest degree of protection.

Highly protectable

Not protectable

Generic Descriptive Suggestive Arbitrary Fanciful

Fanciful Trademark Examples

Google

Reebok

Techron

Rolex

Spotify

Facebook

Hulu

Examples BATTLECAM for computer game software

? Descriptive

Examples SURVIVOR for music band

? Arbitrary

Examples ELECTRIC CANDLE COMPANY for light bulbs

? Generic

Examples

for travel agency services, information about travel

? Generic

Examples

for cigarettes

? Arbitrary

Examples

for coffee

? Fanciful

Examples CAESAR! CAESAR! for salad dressings

? Descriptive

Examples

for telephones

? Fanciful

Genericide

Genericide: mark that was once fanciful has now become so common that it is generic – Examples: ASPIRIN, THERMOS,

CELLOPHANE, ESCALATOR

– Marks in danger of genericide: GOOGLE for internet search

(e.g. “google it” instead of “search it”)

XEROX for copying

KLEENEX for tissue

YO-YO, SPAM

To avoid genericide: use the mark as an adjective, not as a noun or a verb

AD CAMPAINS TO FIGHT GENERICIDE

Trademark Selection

Think broadly when choosing

What is “related”?

The New York Times

Is the mark registrable everywhere?

VII. Proper Use of a Mark

Distinguish Marks in Print

Use it consistently

Use with the Proper Generic Term

Use as a Proper Adjective

Use in Singular

Clarify Ownership of Mark

Use Proprietary Notices

Notices

“” means a mark federally registered in the U.S. Patent and Trademark Office.

“™” means a trademark, either registered or unregistered.

“SM” means a service mark, either registered or unregistered.

“© Copyright 1996 XYZ Co.” and “© 1996 XYZ Co.” are copyright notices, not trademark notices.

IX. Trademark Registration: United States

State Registration

CA Business and Professions Code Sections 14200 - 14418

Federal Registration

Lanham Act

Principal Register

Supplemental Register

Obtaining and Maintaining Federal Registration

X. Forms of U.S. Applications

Intent to use ( Section 1(b))

Use-based (Section 1(a))

Section 44

Section 66

Advantages of intent to use

Secure lots of products/services in lots of classes

Reserve rights in advance

Disadvantages of intent to use

Only products/services offered in commerce can be registered ultimately

Can waste lots of money filing in multiple classes

If desire to extend under Madrid Protocol, only products/services ultimately registered will be extended

Advantages of use-based applications

If discrete products – e.g. non-alcoholic beverages, very easy to file based on use

Cheaper, more certainty for Madrid extensions, Paris filings

Non-U.S. based clients may already have broad registrations in multiple classes that are desirable for defensive and offensive purposes

U.S. TRADEMARK APPLICATION CYCLE Applications filed based on USE

Description Time Period Explanation

Application filed Application filing date

Substantive

Examination

~ 6 months from

filing date

PTO examines the

application for registrability

and either 1) approves the

mark or 2) issues a

procedural or substantive

objection

Response to

Office Action

6 months from

Office Action date

A response to any objection

by the PTO must be filed

within six months from the

date of the objection

U.S. TRADEMARK APPLICATION CYCLE Applications filed based on USE continued…

Description Time Period Explanation Publication ~ 3 months from

approval of

application

Once the PTO approves the

application, it is published in the

Official Gazette of Trademarks

Opposition

Period

30 day from

publication date

Third parties have one month to file an

objection, or request to extend the time

to file an objection (up to 120 days

from the publication date)

Registration

Issues

~ 3 months from

expiration of

opposition period

The registration will issue

approximately three months from the

end of the third party opposition period

Total Time ~ 1-1 ½ years

U.S. TRADEMARK APPLICATION CYCLE Applications filed based on INTENT TO USE

Description Time Period Explanation Application filed Application filing date

Substantive

Examination

~ 6 months from

filing date

PTO examines the application

for registrability and either 1)

approves the mark or 2) issues

a procedural or substantive

objection

Response to

Office Action

6 months from

Office Action date

A response to any objection

by the PTO must be filed

within six months from the

date of the objection

U.S. TRADEMARK APPLICATION CYCLE Applications filed based on INTENT TO USE continued…

Description Time Period Explanation Publication ~ 3 months from

approval of

application

Once the PTO approves the application, it

is published in the Official Gazette of

Trademarks

Opposition

Period

30 day from

publication date

Third parties have one month to file an

objection, or request to extend the time to

file an objection (up to 120 days from the

publication date)

Notice of

Allowance

~ 3 months from

Expiration of

opposition period

This commences a 3-year period within

which the mark must be used and a

Statement of Use must be filed. It is

necessary to file an Extension Request

every six months to keep the application

pending until use is established.

U.S. TRADEMARK APPLICATION CYCLE Applications filed based on INTENT TO USE continued…

Description Time Period Explanation

Statement of Use Filed within 3-years

from the date of the

Notice of Allowance

Registration Issues ~ 3 months from

Acceptance of use

statement

The registration will

issue approximately

three months from

acceptance of the

Statement of Use

Total Time to Approval ~ 1-1 ½ years

Total Time Available to Prove Use ~ 4 years

XI. Special Problems – Identification of Products and Services

Review the USPTO Identification of Goods and Services Manual Regularly

Ongoing changes to classifications according to international meeting on the Nice Classification

e.g. – video games used to be in Class 28, now Class 9

Specificity required to numbing degree

XI. Special Problems – Identification of Products and Services- continued

Rule of thumb: description needs to identify sufficiently what the product or service is for, and then will be classified in that Class: e.g.

• educational books – Class 16

• downloadable books [indicate subject matter] - Class 9 (class follows form . . . )

XI. Special Problems – Identification of Products and Services- continued

Technical subject matter always vexing:

Example:

“Measuring apparatus and instruments” in Class 9 need to specify particular types of instruments, not just the intended use

“pharmaceutical preparations” need to add intended use, (e.g. cancer treatment) but not what they are

XII. SPECIAL PROBLEMS – SPECIMENS - WEBPAGES

TMEP § 904.04

Note that webpage specimens MUST have these elements:

• Picture or textual description of the identified goods

• Prominent appearance of mark in sufficient proximity to the goods to associate the mark with the goods

• Ordering information to buy the goods on the same webpage

XIII. Trademark Registration: Foreign

Territorial Rights

CTM (“Community Trademark”) Filing Procedure

28 Member countries as of June 2014: Austria, Belgium, Bulgaria, Cyprus, Croatia, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, United Kingdom

NOT Norway, Switzerland, Iceland and Liechtenstein

XIII. Map of the European Union

XIII. Trademark Registration: Foreign, cont.

Madrid Protocol – Effective November 2003 allows “one stop” filing internationally Member countries (95 as of 2015):

Albania, Algeria, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia and Herzegovina, Botswana, Bulgaria, Cambodia, China, Colombia, Croatia, Cuba, Cyprus, Czech Republic, Democratic People’s Republic of Korea, Denmark, Egypt, Estonia, European Union, Finland, France, Georgia, Germany, Ghana, Greece,, Hungary, Iceland, India, Iran, Ireland, Israel, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Madagascar, Mexico, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, New Zealand, Norway, Oman, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova,

Continued …

XIII. Trademark Registration: Foreign, cont.

Madrid Protocol – Effective November 2003 allows “one stop” filing internationally Member countries (95 as of 2015):

Continued …

Romania, Russian Federation, Rwanda, San Marino, Sao Tome and Principe, Serbia, Sierra Leone, Singapore, Slovakia, Slovenia, Spain, Sudan, Swaziland, Sweden, Switzerland, Syrian Arab Republic, Tajikistan, The Former Yugoslav Republic of Macedonia, Tunisia, Turkey, Turkmenistan, Ukraine, United Kingdom, United States, Uzbekistan, Vietnam, Zambia, Zimbabwe

XIV. Trademark Policing

Defensive Maintaining proper use

Offensive Vigilant assertion of the owner’s rights

Watch service(s)

In-house “watching”

Educate the Client Advise counsel of similar or confusingly similar marks in the

marketplace.

Find out about the infringer

XV. Enforcement

A. Civil Litigation- Lanham Act

Registered Trademarks

Section 32 and Companion State Statutes

Unregistered Trademarks

Section 43(a) protects against “false designation of origin”

(a)(1) Any person who…Section (a)(1)

(A) is likely to cause confusion…Section(a)(1)(A)

(B) in commercial advertising, or promotion…Section(a)(1)(B)

Anti-Counterfeiting Cyber Squatting

State Court Litigation

B. Trademark Trial and Appeal Board

XV. Enforcement (cont.):

C. UDRP Domain Name Disputes

UDRP is a uniform system of rules set by ICANN to stop registration of a domain name by a third party. Only the domain name ownership is in dispute

Based on contractual agreement to submit to the rules when domain name registered

Several dispute resolution bodies exist, e.g. WIPO, National Arbitration Forum. See www.wipo.org

D. Notice and Takedown Procedure

E. Customs Recordation

F. ITC Action

Conclusion

The life of a trademark can be forever, if proper care is taken in trademark selection, protection, and enforcement. Increasingly, trademark rights supplant or complement patent and copyright rights to create protectable interests in various aspects of how companies do business – their names, logos as well as trade dress aspects of their business.