Structuring Trademark Clearance Opinions Assessing Search Results to Identify Infringements, Overcoming Clearance Challenges,

and Preparing Opinions to Reduce Legal Risks

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WEDNESDAY, SEPTEMBER 10, 2014

Presenting a live 90-minute webinar with interactive Q&A

Richard C. Gilmore, Registered Patent Attorney, Maschoff Brennan, Park City, Utah

George R. McGuire, Member, Bond Schoeneck & King, Syracuse, N.Y.

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Structuring Trademark

Clearance Opinions

© 2014 Maschoff Brennan

Richard C. Gilmore

rgilmore@mabr.com

435.252.1371

Introduction to

Trademark Searching

Trademark Searches Provide:

• Basis for opinion

• But keep limitations in mind

6

Introduction to

Trademark Searching

Trademark Searches Determine

Whether a Particular Mark is:

• Available for use without serious risk of

infringement of the rights of a prior user • Available for registration

• Potential strength of the mark 7

Trademark Search

should help determine if:

1. If a mark is available for use

2. If a mark can be registered

3. Potential strength of the mark

8

Why Conduct a

Trademark Search?

• Identify Risks

• Reduce Costs

• Avoid rebranding

• Avoid litigation • Expedite prosecution of application

9

What Information is

Needed for the Search?

Nature of the Specific Trademark

• Combination • Stylized Script

• Logo

• Word(s) DRINK COKE®

10

What Information is

Needed for Search?

If it is not English—Origin and Meaning

Word origin: Spanish

Meaning: Boss

11

What Information is

Needed for Search?

If the Mark Includes an Acronym What Does it Stand For?

Bavarian Motor Works

12

What Information is

Needed for Search?

Examples of the Way it Will Be Used

Websites Letterhead Merchandise 13

What Information is

Needed for Search?

Complete List of Goods and Services

14

What Information is

Needed for the Search?

Budget

• Resources to search

• Review of the search results

• Investigation into marks of particular interest

15

What Information is

Needed for the Search?

Deadline for the Results

• Scope of search may affect timing

• It may be necessary to investigate risks

posed by specific marks

16

What Information is

Needed for the Search?

Level of Review of Search Results

• Simple identification of relevant marks

identified in the search

• Evaluation of the results

• Formal legal opinion

17

How Much Time

Should be Allowed?

• Searching should commence well in

advance of the product launch

• Additional time may be required for

investigation of potential risks

• More time will be required if adverse

results are received

Timing Requirements

18

Types of

Trademark Searches

Preliminary or “Knock Out” Searches

1. U.S. Patent and Trademark Office Records

2. Internet Searches

• Identical marks

• Obvious spelling variations

• Same international class

• Similar goods/services

19

Types of

Trademark Searches

Full or Comprehensive Search includes:

• U.S. Patent and Trademark Office Records

• State Trademark Office Records

• Common Law Uses of the Mark

20

Types of

Trademark Searches

Common Law Uses of the Mark may include:

• Internet – web uses

• Business name directories

• Trade directory databases

• Domain names

• Telephone directories

• Newspapers, Journals

• Case law 21

Types of

Trademark Searches

Full or Comprehensive Search Includes:

• Identical marks

• Phonetic equivalents

• Plural forms

• Reversal of terms

• Similar character strings

• Similar word formatives

• Similar look, sound, and/or meaning

• Similar in length

• Acronyms/Word equivalents 22

Types of

Trademark Searches

Full or Comprehensive Search Includes:

• Identical goods

• Related goods

• Identical or nearly identical marks with

unrelated goods

23

Trademark Searching

Limitations Inherent in Trademark Searches

• Database updates

• Synonyms

• Misspellings

• Connotations

• Foreign claim of priority

• Translations

• Subjectivity 24

Trademark Searching

Test for Likelihood of Confusion includes:

• Strength of mark

• Similarity between the marks

• Similarity between the goods/services

• Actual confusion

• Purchaser sophistication

• Whether use of the mark was in good faith 25

Trademark Searching

Can the Mark can be Registered?

• Is the Mark Descriptive?

• “APPLE” for computers vs. “Apple” for fruit

• “ANALOG DEVICES” for devices with analog

capabilities

• “QUIK-PRINT” for printing services

• “GRAND HOTELS” for hotel services

26

Trademark Searching

Can the Mark can be Registered?

• Is the Mark Misdescriptive?

• Falsely indicates an ingredient, quality, or

characteristic of the goods/services

• Not protectable

• May be Subject to False Advertising Claims

• “Titanium” for vehicles that do not contain titanium

• “Dura-Hyde” for plastic shoes with a leather-like

appearance

• “Softhide” for imitation leather material 27

Trademark Searching

Can the Mark can be Registered?

• Is the Mark Generic?

• “HAND WASH” for hand wash

• Aspirin

• Escalator

• Heroin

• Thermos

• Videotape

28

Trademark Searching

Can the Mark can be Registered?

• Is the Mark Primarily Merely a Surname?

29

Trademark Searching

Can the Mark can be Registered?

• Is there Some Other Impediment to Registration?

• Geographically Descriptive

• “PARADISE ISLAND AIRLINES” for airline services to

Paradise Island

• “CALIFORNIA PIZZA KITCHEN” for restaurant

services

• “HERSHEY” for chocolates

30

What Action is Available

for Adverse Results

Avoid claims of Trademark Infringement or Refusal to Register the Mark

• Abandon the preferred mark and adopt an alternative

• Determine if prior mark is vulnerable to cancellation

• Acquire the prior mark

• Obtain consent from the owner of the prior mark

• Obtain a license to use the mark for specific goods or services

31

Trademark Clearance Opinions

George R. McGuire

gmcguire@bsk.com

(315) 218-8515

Best Practices

Clearance Opinions

• Should opinion be oral or written? oOral if requested by client; common reasons:

− If unfavorable opinion, does client want it disclosed orally

instead of in writing

−No written record (and circumstances may change over

time + may not anticipate all possible defenses at time of

opinion)

−Regardless of opinion, in order to avoid costs associated

with drafting the opinion

33

Written Opinions

Skeleton

• Background

• Caveats

• Executive Summary

• List of Pertinent Marks and/or Landscape

• Analysis/Risk Assessment o Suggestions to avoid/minimize risks

• Conclusion

34

Background

• Context for the opinion -- include: o The candidate/proposed mark.

o The client’s plans for use of the candidate mark.

oWhether the opinion addresses both use and

registration or only use.

o Any other background information the client has

provided and on which counsel relied in assessing the

significance of the search references.

35

Caveats

• Common caveats: o Potential omissions from the search report owing to the timing of

database updates and searcher subjectivity

o Assumptions about the completeness and reliability of the content

of the source databases

o Subjectivity of Trademark Analysis (“reasonable minds may

differ…”)

o Conflicts based on meaning of marks; e.g., London Fog v Smog,

Lollypop v jellibean, Cyclone v Tornado (no good way to search

similar meanings)

o Design/Trade Dress – search tools not very good at searching

design marks and trade dress

36

Executive Summary

• Typically 1 - 3 sentences o Indicate conclusion as to whether mark is available for

use and/or registration

oMay restate any assumptions/caveats

37

List of Marks

• Pertinent/Problematic Marks o Typically list in table form with column headers:

−Mark

−Goods/Services

−Status

Registered, Pending application (ITU v. Use), Common Law

only

−Register/Common Law Source

Federal, State, Common Law

−Owner

38

Landscape/General Interest

• If no pertinent marks uncovered o Identify as being landscape or of general interest only

(minimize impact)

o Briefly discuss how proposed mark differs

− In spelling/sight, sound, meaning

− In markets/market channels

− In goods/services

39

Analysis/Risk Assessment

• Thorough legal analysis of search results oUseful to apply factors as a court/PTO would apply

• Be open ended to permit additional reasons to

be articulated later if new facts later come to

light

• Explain significance of disclaimers,

cancellation, abandonment, if applicable o Explain trade name and domain name issues that may

differ from trademark analysis

• Other legal theories, if applicable oDilution, right of publicity, etc.

40

Registerability

• In addition to right to use, may also advise on

registerability of mark

• Factors PTO would consider oCompare with other marks on federal register

(pending and/or registered)

• Inherently distinctive versus descriptive issues o Principal versus Supplemental Register

41

Suggestions

• Where potentially conflicting marks are

uncovered, may want to suggest ways for client

to lessen the relevance of such marks oUse logo/design elements

oCombine with another mark to create more distinctive

mark

42

Challenging Potentially

Conflicting Marks

How to Challenge

• Argument oNo LOC (or other argument to distinguish)

• Cancel registration o If favorable facts, seek to cancel problematic

registration

• Seek Consent/Co-Existence o Alternative to Cancellation and/or if facts are suitable

• License/Acquire

44

Cancellation

• Petition for Cancellation of a Registration o 15 U.S.C. § 1064

• Bases for Petition: o Earlier first use + LOC/Dilution

−Within five years from the date of the registration of the

mark

o Abandonment/Generic/Fraud

−At any time after registration

45

Consent Agreements

• Cancellation may be viable option, but could be

expensive and take years to resolve

• Is it more practical to seek consent instead? oContract in which owner of one mark consents to the

use and/or registration of the same or similar mark by

another party

−Must point out why the parties believe there is no

confusion

−Detail how the parties will avoid confusion

46

Why No confusion?

• Differences in marks o If the marks are not identical but contain some differences, this

can be pointed out

• Differences in market channels o If one party promotes its goods/services in a different market

channel, this should be detailed

• Differences in markets/consumers o Similarly, if the parties serve distinct markets (e.g., professional

versus consumer)

• Differences in geography o If there are differences in the geographic distribution of

goods/services, this can serve as a basis

47

Avoid Confusion?

• Work together to avoid confusion

• Include other indicia of source oOther house mark?

oCompany name?

• Include disclaimers/advertising

• If alerted to actual instance of confusion, contact

confused party to dispel confusion

48

License/Acquire

• If feasible, consider whether mark might be

licensed and/or acquired

• If license: oQuality Control to be exercised by mark owner

o All goodwill will vest with mark owner

o Payment of royalties to mark owner

• If acquire: oWill acquire goodwill symbolized by mark

−Sometimes hard to value

49

Use of Opinion in Litigation

• Most typical use is as defense to charge of willfulness

o Might also be used to show good faith in bringing suit

• To be useful, opinion must be:

o Prepared by a “competent” attorney

− One with trademark specific experience and independence

o Based on adequate investigation

− Generally a “full” search

See, INTERNATIONAL STAR CLASS YACHT RACING

ASSOCIATION, v. TOMMY HILFIGER, U.S.A., INC. (search of only

federal records insufficient)

o Completeness

− Thorough legal analysis

50

Waiver of Privilege

• Production of opinion will waive privilege oNot just for opinion, but also all related documents and

communications associated with the opinion

−Search jurisdiction as to how far waiver applies to work

product (varies circuit to circuit)

51

Lawyer as Witness

• Is testimony from lawyer rendering opinion relevant and admissible?

o District courts have reached different conclusions as to relevance:

− State of mind of accused infringer is what is relevant

−Whether accused infringer withheld material from attorney might also be relevant

• Can attorney serve dual role as potential witness and litigation counsel?

o ABA Model Rule 3.7

− Lawyer shall not act as advocate at trial in which lawyer likely to be witness

Does not necessarily bar others at lawyer’s firm from handling litigation

− Should consult precedent in your jurisdiction as unsettled

52