How to Quickly Do Your Own Initial Trademark Clearance Searches ...
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© 2016 Kilpatrick Townsend April 7, 2016 How to Quickly Do Your Own Initial Trademark Clearance Searches and More Presented to
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Transcript of How to Quickly Do Your Own Initial Trademark Clearance Searches ...
© 2016 Kilpatrick Townsend April 7, 2016
How to Quickly Do Your Own Initial Trademark Clearance Searches and More Presented to
Panelist Introductions
2
Elizabeth Regan is Vice President & Assistant General Counsel for Intellectual Property with
Marriott International, Inc. As head of Marriott’s IP Group, she is responsible for the
company's intellectual property matters worldwide, including domestic and international brand
and portfolio strategy and management; enforcement of intellectual property rights; and
transactional matters related to intellectual property. She has been a speaker at programs
offered by the International Trademark Association, the Association of Corporate Counsel, the
American Bar Association, the D.C. Bar Association and others. In 2015, Elizabeth was
named a Corporate IP Star by Managing Intellectual Property.
David Mayberry is a partner with and team leader of Kilpatrick Townsend’s nationally and
internationally recognized Trademark and Copyright team. As lead trial counsel, David
Mayberry has helped clients resolve intellectual property law claims at trial, in arbitration,
through mediation and creative settlements outside the courtroom. He has complex litigation
experience in trademark, copyright, patent, trade secret, franchise and antitrust cases. Mr.
Mayberry also counsels clients on trademark and trade dress enforcement and protection
issues. Mr. Mayberry has be recognized by Chambers USA: America's Leading Lawyers for
Business for Intellectual Property: Trademark, Copyright & Trade Secrets, Super Lawyers
magazine, Legal 500, and World Trademark Review 1000.
Tracie Siddiqui is an associate with Kilpatrick Townsend’s nationally and internationally
recognized Trademark and Copyright team. She focuses her practice on trademark, copyright,
sweepstakes and cybersquatting issues, including domestic and international trademark
clearance and prosecution, enforcement and infringement litigation, and client counseling. Ms.
Siddiqui has been recognized as a Washington, D.C. “Rising Star” in the area of Intellectual
Property Law by Super Lawyers magazine.
Agenda
Introduction to Trademark Law
Sands, Taylor & Wood v. The Quaker Oats Co.:
A Case Study
Preliminary Search Overview & Tips
Questions
3
Introduction to Trademark Law
What is a Trademark?
A distinctive word, name or symbol for products or
services offered by a particular company.
5
SLOGANS
Travel Brilliantly ®
SOUNDS
6
Trademarks Take Many Different Forms
WORDS
MARRIOTT
SYMBOLS
SHAPES
The exclusive right to use a mark in a particular country in
connection with a particular set of goods or services
What are Trademark “Rights”?
7
Geographic Limitations
No such thing as a “global trademark”
Trademark laws vary from one country to another
Trademark rights belong to the first to file for registration or the first to use -- depending on each jurisdiction’s law.
8
• Federal Registration conveys nationwide rights.
• Without a registration, rights are territorial and based
on use.
• The first to use a mark in a particular geographic area
develops “common law” rights in that area.
9
Establishing Trademark Rights in the U.S.
Seattle
Miami
• Registrations cover only the goods and services
specifically listed
• Goods & services are categorized by “class”
• Some countries (e.g., China and Japan) also use
sub-classes
Goods and Services Limitations
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Arbitrary
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What makes a strong mark? The Spectrum of Distinctiveness
Fanciful Suggestive Descriptive Generic
MORE DISTINCT
• To minimize the risk of disputes and
liability for trademark infringement
Why Conduct Trademark Clearance Searches?
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• To determine where the mark can
be protected (registered)
• To determine whether the mark can
be enforced against others
• Gatorade/Thirst Aid: US$42 million in
damages (reduced to $20.6 million)
• Goodyear/Big O Tires: US$19 million in
damages(later reduced to $4.6 million)
Why Conduct Trademark Clearance Searches?
13
• Pfizer/Trovan: US$143 million in damages, including
$135 million punitive (awarded by jury - was later
reversed)
For clearance, we must
evaluate whether there is
a “likelihood of confusion”
between the marks at
issue. In other words,
whether consumers would
be likely to be confused as
to the source, origin or
sponsorship of the parties’
products through their use
of their marks
Likelihood of
Confusion?
Similar? Marks
Related Goods or Services?
Similar trade channels?
Careful buyers?
Other similar marks on
similar goods?
Actual confusion?
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Likelihood of Confusion
Bottom Line: no absolute rules, very factual case-by-case determination
• Where will the use appear?
• Is it easy to change?
• Is it expensive to change?
• Is there a regulatory aspect?
• Is this something you need to brand, or would a
generic use be sufficient?
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Some Practical Considerations
Sands, Taylor & Wood v. The Quaker
Oats Co.: A Case Study
Why Trademark Clearance is Important: A Tale in 10 Myths
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Myth #10: Descriptive Use is Always Fair Use
“Even if Thirst Aide were
descriptive, Quaker could
not prevail because it has
used the term as a
trademark in its ads.”
Descriptive Marks Are Different from Descriptive Use.
And If You Think It Is Descriptive, You Better Be Right. 18
Myth #9: Only Identical Marks Can Infringe
“The fact that STW and its
predecessors have not used the
entire slogan THIRST-AID FIRST
AID FOR YOUR THIRST since
1949 does not necessarily mean
that the registration has been
abandoned.”
Confusingly Similar Marks Can Infringe. 19
Myth #8: Only Use on Identical Goods Infringes
“We do not see a wide gulf
between a trademark for
beverage syrups and a
trademark for beverages...”
Use on Related Goods Can Infringe. 20
Myth #7: If I Don’t Find Use, They Have Abandoned It
“… STW has manifested a
serious intent to market (or
license someone else to
market) an isotonic beverage
in direct competition with
Gatorade under the THIRST-
AID name.”
Attempts to License Can Constitute Use. 21
Myth #6: Different Channels of Trade Are Always Sufficient to Prevent Confusion
“[Although THIRST-AID
syrup was only sold in the
industrial market], the
THIRST-AID mark was
used in retail, in-store
advertising and
promotional materials
provided to soda fountains
that sold beverages made
from THIRST-AID syrups.”
Channels of Trade Are Not Always As Limited As They Appear. 22
Myth #5: If You Don’t Intend to Usurp Goodwill, it is Not Infringement
A survey shows that
“…consumers faced with
an isotonic beverage
marketed under the name
‘Thirst Aid’ would be likely
to think it was produced
either by the manufacturer
of Gatorade or by another
manufacturer who was
trading off Gatorade’s good
will. ”
Beware of Reverse Confusion. 23
Myth #4: If You Use Your House Mark Too, That Prevents Confusion
“….it is precisely the
strong association
between Gatorade and
‘Thirst Aid” created by
Quaker’s ads that is
likely to create confusion
in this case. ”
Use of a house mark can exacerbate a likelihood of confusion. 24
Myth #3: If Marketing Informs You About a Prior Use, It’s OK
“…an employee of
Quaker’s research and
development division
telephoned Lannin and
informed him that Pet had
previously test-marketed
an isotonic beverage
called THIRST-AID.”
Marketing’s Awareness of Third-Party Uses is a Big Red Flag. 25
Myth #2: If You Don’t Willfully Infringe, You Won’t Have to Pay Monetary Damages
“A reasonably
royalty…would more
accurately reflect both
the extent of Quaker’s
unjust enrichment and
the interest of STW that
has been infringed.”
Judges Have Discretion to Award Damages Even
Without a Finding of Willfulness. 26
27
Myth #1: If You Accidentally Infringe, You Can Always Resolve it Quickly and Easily
Eliminating risky marks at the preliminary stage will
not only save on outside counsel fees, it can avoid
headaches down the road.
28
The Moral of the Story
Putting it All Together:
Preliminary “Knock Out” Search
Overview and Tips
Determine where the mark falls on the Spectrum of Distinctiveness:
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Step 1: Evaluating the Mark
Arbitrary Fanciful Suggestive Descriptive Generic
MORE DISTINCT
Interview the marketing team
• How did you come up with the name?
• What is the meaning or significance of the mark? Does it have any significance or meaning within the industry?
• Exactly what goods or services will be offered under the mark?
• Is there a planned design or logo?
• Do you know if the mark is being used by anyone else? Have you checked for similar names through Internet or other searching?
• Are you currently using the mark in this form or another similar form? If so, how?
• Who is the target audience?
• Will it be used externally or only internally?
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Step 1: Evaluating the Mark
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Step 2: Conduct an Internet Search
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Step 3: Conduct a PTO Search
http:tmsearch.uspto.gov/
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Step 3: Conduct a PTO Search
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Step 3: Conduct a PTO Search
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Step 3: Conduct a PTO Search
37
Step 3: Conduct a PTO Search
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Step 3: Conduct a PTO Search
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Step 4: Evaluate Hits
Likelihood of
Confusion?
Similar Marks?
Related Goods or Services?
Similar trade
channels?
Careful buyers?
Other similar
marks on similar goods?
Actual confusion?
Review the hits from the
Internet and PTO
searches against the
proposed mark.
Lack of a trademark registration does not mean lack
of rights.
Geographically remote uses can grow to become
infringing uses.
Marketing might expand its use, but probably will not
check back with you to conduct another search.
When in doubt, knock it out.
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Tips and Reminders
Questions
David Mayberry
Kilpatrick Townsend
+1 202.508.5870
Tracie Siddiqui
Kilpatrick Townsend
+1 202.508.5862
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Elizabeth Regan
Marriott International, Inc.
+1 301.380.2781
