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Trademarks 101Trademarks 101and and

emerging trendsemerging trends

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A A trademark trademark is a word, phrase, is a word, phrase, symbol or design, or a combination of symbol or design, or a combination of words, phrases, symbols or designs, words, phrases, symbols or designs, that identifies and distinguishes the that identifies and distinguishes the

source of the goods of one party from source of the goods of one party from those of others. those of others.

• Trademarks are granted in specific categories

• Trademarks are granted in geographic areas

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A A service markservice mark is the same as a is the same as a trademark, except that it trademark, except that it

identifies and distinguishes the identifies and distinguishes the source of a service rather than a source of a service rather than a

product.product.

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KodakKodak ExxonExxon Coca ColaCoca Cola Mc DonaldMc Donald’’ss StarbucksStarbucks WalmartWalmart MTVMTV VictoriaVictoria’’s Secrets Secret

PolaroidPolaroid XeroxXerox LegoLego Beanie BabiesBeanie Babies KraftKraft PlayboyPlayboy AppleApple DellDell

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Before using a mark, or applying to register Before using a mark, or applying to register one, you should search to see if itone, you should search to see if it’’s already s already

registered for useregistered for use

Trademark SearchesTrademark Searches www.uspto.govwww.uspto.gov Private search firmsPrivate search firms

• Will pick up Will pick up ““common lawcommon law”” uses uses • Expensive ($400 - $500) per mark searchedExpensive ($400 - $500) per mark searched

http://tess2.uspto.gov/bin/gate.exe?http://tess2.uspto.gov/bin/gate.exe?f=searchss&state=896lck.1.1f=searchss&state=896lck.1.1

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88

99

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How do I acquire trademark How do I acquire trademark rights?rights?

From use of the mark in commerceFrom use of the mark in commerce Within a particular segment of the Within a particular segment of the

economy (as defined by the economy (as defined by the Trademark office)Trademark office)

Within a specified geographic area Within a specified geographic area (as specified by where you do (as specified by where you do business and/or the area for which business and/or the area for which you apply)you apply)

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What is use in commerce?What is use in commerce? For goods:For goods: the mark must appear on the the mark must appear on the

goods, the container for the goods, or goods, the container for the goods, or displays associated with the goods, and displays associated with the goods, and the goods must be sold or transported in the goods must be sold or transported in commerce.commerce.

For services:For services: the mark must be used or the mark must be used or displayed in the sale or advertising of the displayed in the sale or advertising of the services, and the services must be services, and the services must be rendered in commerce.rendered in commerce.

Again, the economic niche(s) and Again, the economic niche(s) and geographic area(s) in question.geographic area(s) in question.

Tradmarks cannotTradmarks cannot

Be reserved (for future use)Be reserved (for future use)Protect ideasProtect ideas

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Mark Must Be Mark Must Be ““DistinctiveDistinctive””Fanciful Arbitrary Suggestive Descriptive Generic y Generic n

Fanciful Arbitrary Suggestive Descriptive Generic y Generic n

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Mark Must Be Mark Must Be ““DistinctiveDistinctive””

Fanciful (Exxon)Fanciful (Exxon) Arbitrary (Apple)Arbitrary (Apple) Suggestive (Coca-Cola)Suggestive (Coca-Cola) Descriptive (Expert Plumbers)Descriptive (Expert Plumbers) Generic yes (Xerox)Generic yes (Xerox)

When a trademark from When a trademark from ““aboveabove”” category falls into category falls into ““Generic,Generic,”” there is a risk of loss of rights. Xerox and there is a risk of loss of rights. Xerox and Kleenex (for example) have to fight hard to protect Kleenex (for example) have to fight hard to protect their marks.their marks.

Generic no (Tissues)Generic no (Tissues)

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Is registration of a mark required?Is registration of a mark required?

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No.No. You can establish You can establish rights in a mark based on rights in a mark based on

legitimate use of the legitimate use of the mark in commerce.mark in commerce.

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Why Register?Why Register? constructive notice to the public of constructive notice to the public of

the registrant's claim of ownership of the registrant's claim of ownership of the mark; the mark;

a legal presumption of the a legal presumption of the registrant's ownership of the mark registrant's ownership of the mark and the registrant's exclusive right to and the registrant's exclusive right to use the mark nationwide on or in use the mark nationwide on or in connection with the goods and/or connection with the goods and/or services listed in the registration; services listed in the registration;

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Why Register?Why Register?

the ability to bring an action concerning the ability to bring an action concerning the mark in federal court; the mark in federal court;

the use of the U.S registration as a basis to the use of the U.S registration as a basis to obtain registration in foreign countries; obtain registration in foreign countries; and and

the ability to file the U.S. registration with the ability to file the U.S. registration with the U.S. Customs Service to prevent the U.S. Customs Service to prevent importation of infringing foreign goods.importation of infringing foreign goods.

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Where to Register?Where to Register?

State RegistrationsState Registrations Cheaper (Illinois = $15)Cheaper (Illinois = $15) Statewide protectionStatewide protection

Federal RegistrationsFederal Registrations The cost to apply for a U.S. trademark is now The cost to apply for a U.S. trademark is now

$325 per class of goods and services (if you $325 per class of goods and services (if you use the electronic filing system).use the electronic filing system). It may be It may be even lower ($275) if the applicant uses a pre-even lower ($275) if the applicant uses a pre-ordained description of good and servicesordained description of good and services

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When can I use the When can I use the trademark symbols TM trademark symbols TM

and SM?and SM? Any time you claim rights in a mark, Any time you claim rights in a mark,

you may use the "TM" (trademark) or you may use the "TM" (trademark) or "SM" (service mark) designation to "SM" (service mark) designation to alert the public to your claim, alert the public to your claim, regardless of whether you have filed regardless of whether you have filed an application with the USPTO.an application with the USPTO.

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When can I use the When can I use the trademark symbol ®?trademark symbol ®?

You may use the federal registration You may use the federal registration symbol "®" symbol "®" onlyonly after the USPTO after the USPTO actually actually registers a markregisters a mark, and , and notnot while an application is pending. Also, while an application is pending. Also, you may use the registration symbol you may use the registration symbol with the mark only on or in with the mark only on or in connection with the goods and/or connection with the goods and/or services listed in the federal services listed in the federal trademark registration.trademark registration.

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What must an application What must an application include?include?

the name of the applicant;the name of the applicant; a name and address for a name and address for

correspondence;correspondence; a clear drawing of the mark;a clear drawing of the mark; a listing of the goods or services; and a listing of the goods or services; and the filing fee for at least one class of the filing fee for at least one class of

goods or services. goods or services.

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How long does a federal How long does a federal trademark last?trademark last?

10 years 10 years Renewable for successive 10 year periodsRenewable for successive 10 year periods After 5 years, with proper filings, mark After 5 years, with proper filings, mark

becomes becomes ““incontestableincontestable””

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Trademark InfringementTrademark Infringement and Dilution and Dilution

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What is a trademark What is a trademark Infringement?Infringement?

Senior user owns markSenior user owns mark Junior user begins to use the same or Junior user begins to use the same or

similar mark on the same or similar goods similar mark on the same or similar goods or servicesor services

Likelihood of confusion in marketLikelihood of confusion in market

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Who is the law protecting?Who is the law protecting?

ConsumersConsumers The publicThe public’’s right not to be confuseds right not to be confused

Mark ownersMark owners The right to develop brand awarenessThe right to develop brand awareness The right to prevent free-loaders from trading The right to prevent free-loaders from trading

on the mark owneron the mark owner’’s good will and reputation s good will and reputation in the market placein the market place

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What law appliesWhat law applies

Federal StatutesFederal Statutes The Lanham ActThe Lanham Act

• 15 U.S.C. §§ 1051 - 1127 15 U.S.C. §§ 1051 - 1127

State StatutesState Statutes Counterfeit Trademark ActCounterfeit Trademark Act

• 765 ILCS 1049765 ILCS 1049 http://www.legis.state.il.us/legislation/ilcs/ch765/http://www.legis.state.il.us/legislation/ilcs/ch765/

ch765act1040.htmch765act1040.htm

Judicial DecisionsJudicial Decisions

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Lanham ActLanham Act (1) (1) Any person who shall, without the consent of the Any person who shall, without the consent of the

registrant - registrant - (a) (a) use use in commercein commerce any reproduction, counterfeit, copy, or any reproduction, counterfeit, copy, or

colorable imitation of a colorable imitation of a registered markregistered mark in connection in connection with the sale, offering for sale, distribution, or advertising with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which of any goods or services on or in connection with which such use is such use is likely to cause confusionlikely to cause confusion, or to cause , or to cause mistake, or to deceive; or mistake, or to deceive; or

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Lanham ActLanham Act

(b) (b) reproducereproduce, , counterfeitcounterfeit,, copy copy, or colorably , or colorably imitate imitate a a registered markregistered mark and apply such and apply such reproduction, counterfeit, copy, or colorable reproduction, counterfeit, copy, or colorable imitation to imitation to labels, signs, prints, packages, labels, signs, prints, packages, wrappers, receptacles or advertisementswrappers, receptacles or advertisements intended to be intended to be used in commerceused in commerce upon or in upon or in connection with the sale, offering for sale, connection with the sale, offering for sale, distribution, or advertising of goods or services distribution, or advertising of goods or services on or in connection with which such use is on or in connection with which such use is likely likely to cause confusionto cause confusion, or to cause mistake, or to , or to cause mistake, or to deceive, deceive,

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Lanham ActLanham Act

shall be liable in a civil action by the shall be liable in a civil action by the registrant for the remedies hereinafter registrant for the remedies hereinafter provided.provided. InjunctionInjunction DefendantDefendant’’s profitss profits PlaintiffPlaintiff’’s damagess damages CostsCosts AttorneyAttorney’’s fees (if infringement willful)s fees (if infringement willful)

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Likelihood of Confusion FactorsLikelihood of Confusion Factors

Similarity of the MarksSimilarity of the Marks Similarity of the ProductsSimilarity of the Products Area and Manner of Concurrent UseArea and Manner of Concurrent Use Degree of Care Exercised by ConsumersDegree of Care Exercised by Consumers Strength of PlaintiffStrength of Plaintiff’’s Marks Mark Actual ConfusionActual Confusion Intent of DefendantsIntent of Defendants

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Types of ConfusionTypes of Confusion

ForwardForward Small Junior trades off of Big Senior UserSmall Junior trades off of Big Senior User

ReverseReverse Big Junior saturates market and overwhelms Big Junior saturates market and overwhelms

Small Senior UserSmall Senior User Initial InterestInitial Interest

Confusion that creates an initial customer Confusion that creates an initial customer interest (e.g. meta-tags, domain names)interest (e.g. meta-tags, domain names)

Post-SalePost-Sale Confusion of someone other than purchaserConfusion of someone other than purchaser

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Anticybersquatting Consumer Anticybersquatting Consumer Protection Act (ACPA)Protection Act (ACPA)

Enacted in 1999Enacted in 1999 Addresses the problem of domain name Addresses the problem of domain name

hi-jackershi-jackers

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Liability Under ACPALiability Under ACPA

Bad faith intent to profit from markBad faith intent to profit from mark Register, traffic in or use a domain name Register, traffic in or use a domain name

that:that:

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Liability Under ACPALiability Under ACPA

(I) (I) in the case of a mark that is in the case of a mark that is distinctivedistinctive at the at the time of registration of the domain name, is time of registration of the domain name, is identical or confusingly similaridentical or confusingly similar to that mark; to that mark;

(II) (II) in the case of a in the case of a famous markfamous mark that is famous that is famous at the time of registration of the domain name, is at the time of registration of the domain name, is identical or confusingly similar to or dilutiveidentical or confusingly similar to or dilutive of of that mark; or that mark; or

(III) (III) is a trademark, word, or name protected by is a trademark, word, or name protected by reason of section 706 of title 18 or section reason of section 706 of title 18 or section 220506 of title 36. 220506 of title 36.

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““Bad FaithBad Faith”” Elements under Elements under ACPAACPA

(1) (1) trademark or other IP rightstrademark or other IP rights in domain in domain name; name;

(2) (2) domain name consists of domain name consists of legal namelegal name of of person or name used to identify person; person or name used to identify person;

(3) (3) person's person's prior use of domain nameprior use of domain name in in connection with offer of goods or services; connection with offer of goods or services;

(4) p(4) person's erson's noncommercial or fair usenoncommercial or fair use of the of the mark in site; mark in site;

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““Bad FaithBad Faith”” Elements under Elements under APCAAPCA

(5) (5) intent to divert consumersintent to divert consumers from the mark from the mark owner's online location to a site accessible owner's online location to a site accessible under the domain name;under the domain name;

(6) (6) offer to transfer domain nameoffer to transfer domain name to the mark to the mark owner or any third party owner or any third party for financial gain without for financial gain without having used or intended to use domain namehaving used or intended to use domain name to to offer goods or services; offer goods or services;

(7) (7) provision of provision of false contact informationfalse contact information when when applying for the registration of the domain name;applying for the registration of the domain name;

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““Bad FaithBad Faith”” Elements under Elements under APCAAPCA

(8) registration or acquisition of (8) registration or acquisition of multiple domain multiple domain namesnames which the person knows are identical or which the person knows are identical or confusingly similar to marks of others that are confusingly similar to marks of others that are distinctive at the time of registration of such distinctive at the time of registration of such domain names; domain names;

(9) (9) the extent to which the the extent to which the markmark incorporated in incorporated in the domain name registration is or is not the domain name registration is or is not distinctive and famousdistinctive and famous within the meaning of within the meaning of subsection (c)(1) of this section. subsection (c)(1) of this section.

Domains v. Search TermsDomains v. Search TermsThe protection afforded trademarks as URLs/domain names is not afforded/extended to the use of trademarks as search terms.

Generally, the courts have not limited the use of trademarks as search terms (or the related auctions and commerce that goes with them). See, for example, “Important Ninth Circuit Ruling on Keyword Advertising, Plus Recaps of the Past 4 Months of Keyword Ad Decisions” (very detailed review of a case and the issues, March, 2011, by Eric Goldman).

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Trademark DilutionTrademark Dilution

Lessening of a famous mark to identify Lessening of a famous mark to identify and distinguish goods and servicesand distinguish goods and services

Irrespective of:Irrespective of: Competition between owner of mark and other Competition between owner of mark and other

parties; orparties; or Likelihood of confusion, mistake or deceptionLikelihood of confusion, mistake or deception

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Trademark DilutionTrademark Dilution

““BlurringBlurring”” distinctiveness of mark distinctiveness of mark ““TarnishingTarnishing”” reputation of mark reputation of mark

Top Trends In TrademarkTop Trends In Trademark

Trademark Application MetricsTrademark Application Metrics New gTLDNew gTLD Political and Celebrity TrademarksPolitical and Celebrity Trademarks The latest on keyword advertisingThe latest on keyword advertising

Trademark Application MetricsTrademark Application Metrics

Total number of applications filed in USPTO including all classes on a fiscal year basis

New gTLDNew gTLD

Generic top-level domain namesGeneric top-level domain names Instead of .com, .org, and .net, there Instead of .com, .org, and .net, there

will be .pepsi, .kodak, .nike etc.will be .pepsi, .kodak, .nike etc. ICANN application fee = $185,000ICANN application fee = $185,000

New gTLD Application Period New gTLD Application Period began on January 12, 2012began on January 12, 2012

Political and Celebrity Political and Celebrity TrademarksTrademarks

Celebrities:Celebrities: SheenSheen KardashianKardashian SnookySnooky ParisParis

Political TMsPolitical TMs Seal Team 6 – DisneySeal Team 6 – Disney Occupy Wall StreetOccupy Wall Street

The Latest in Keyword The Latest in Keyword AdvertisingAdvertising

The Latest in Keyword The Latest in Keyword AdvertisingAdvertising

To win on infringement, plaintiff must show:To win on infringement, plaintiff must show:

1) it has a valid, registered trademark that is 1) it has a valid, registered trademark that is entitled to protection;entitled to protection;

2) that defendant used the mark;2) that defendant used the mark;

3) that the use was in commerce;3) that the use was in commerce;

4) that the use was in connection with the sale 4) that the use was in connection with the sale or advertising of goods or services; andor advertising of goods or services; and

5) that the use was without plaintiff’s consent.5) that the use was without plaintiff’s consent.

The Latest in Keyword AdvertisingThe Latest in Keyword Advertising

Legal question: is employing a word or Legal question: is employing a word or phrase in keyword advertising “use in phrase in keyword advertising “use in commerce” that would trigger trademark commerce” that would trigger trademark infringement?infringement?

The Latest in Keyword The Latest in Keyword AdvertisingAdvertising

Answer: YesAnswer: Yes Rescuecom Corp. v. Google, Inc.Rescuecom Corp. v. Google, Inc., 562 F.3d , 562 F.3d

123 (2d Cir. 2009)123 (2d Cir. 2009) Fair Isaac Corp. v. Experian Information

Solutions, Inc., 645 F. Supp. 2d 734, 760 (D. Minn. 2009)

Network Automation, Inc. v. Advanced Systems Concepts, 638 F.3d 1137, 1145 (9th Cir. 2011)

The Latest in Keyword The Latest in Keyword AdvertisingAdvertising

Notwithstanding the fact that keywords have Notwithstanding the fact that keywords have been found to be used in business, websites been found to be used in business, websites have yet to lose a major casehave yet to lose a major case

Amazon's Merchandising of Its Search Results Amazon's Merchandising of Its Search Results Doesn't Violate Trademark Law Doesn't Violate Trademark Law

It's Legally Okay if Google Thinks Your Name It's Legally Okay if Google Thinks Your Name and Erectile Dysfunction Drugs Have Something and Erectile Dysfunction Drugs Have Something to Do With Each Otherto Do With Each Other

Google settles Rosetta Stone lawsuit, its Google settles Rosetta Stone lawsuit, its last major dispute over AdWordslast major dispute over AdWords

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