What Every Dietary Supplement Business Should Know About Protecting Brands and Managing Trademark...

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What Every Dietary SupplementBusiness Should Know AboutProtecting Brands and ManagingTrademark Concerns

Series 3 • Seminar 4 Tuesday, July 21, 2009Series 3 • Seminar 3 Thursday, May 28, 2009

P R E S E N T E D B Y :

Michael E. MangelsonCatherine P. LakeJoshua G. Gigger

Seminar 4 • Tuesday, July 21, 2009

What Every Dietary Supplement Business Should Know

Overview

• What is a trademark?

• Selecting and clearing trademarks.

• Protecting trademarks through registration.

Series 3 • Seminar 4 Tuesday, July 21, 2009

• Protecting trademarks through registration.

• Protecting trademarks through proper use.

• Protecting trademarks through enforcement.


BrandingBranding--Why Trademarks MatterWhy Trademarks Matter



What is a Trademark?

• Any word, name, symbol, or device, or anycombination thereof, used to distinguish goodsand identify the source of goods.



Trademark–Examples

• Words: USANA XANGO SCHIFF

• Designs:


• Designs:

• Word/DesignCombinations:


Trademark–Examples

Packaging:


Color, Sound, Fragrance:


Building Strong Trademarks Involves Three Steps:

1. Select an appropriate mark.

2. Register the mark.

3. Protect the mark through proper use and


3. Protect the mark through proper use andenforcement.


1. Identify a distinctive mark.

2. Clear marks through trademark searches.

3. Do not use marks that are not truthful, that are

SelectingSelecting TrademarksTrademarks


misleading, or that have unsubstantiated productclaims.


A mark must be distinctive (inherently or acquired through use) to be protectable. For thestrongest legal protection, select distinctive marks without descriptive, surname orgeographic connotations.

SelectingSelecting TrademarksTrademarks––Distinctive MarksDistinctive Marks


Leastdistinctive

Mostdistinctive


Selecting TrademarksSelecting Trademarks––Searching and ClearingSearching and ClearingTrademarksTrademarks



• Goal: eliminate marks that areconfusingly similar to or thatdilute third-party marks.

Selecting TrademarksSelecting Trademarks––Searching and Clearing TrademarksSearching and Clearing Trademarks

• Factors to analyze:


• Factors to analyze:

- similarities of sound,appearance, and meaning.

- relationship between the marks’products or services andchannels of trade.

- sophistication of customers.

- strength and fame of marks.



1. Conduct preliminary “knock-out” screening.

– USPTO database at http://www.uspto.gov (no state,common law, or foreign records).

– Third-party databases such as SAEGIS and Dialog(includes federal, state, and some foreign


(includes federal, state, and some foreignsearching).

– Internet search engines, yellow pages, WHOISregistries, and state databases.

– Trade/industry directories and telephone books.2. Engage counsel to search federal and state records,

including registrations, pending and abandonedapplications, and expired and canceled registrations.


3. Order full “common law” search by commercial searchfirm (e.g., Thomson CompuMark).

4. Order international search (if foreign use is anticipated).5. Obtain counsel to evaluate search reports and provide



5. Obtain counsel to evaluate search reports and provideopinion regarding risks.

6. Investigate abandoned applications, canceled orexpired registrations, owner of potentially conflictingmark, and USPTO status information and prosecutionhistory for applications and registrations to determineavailability of mark in the marketplace.



7. Avoid unacceptable risks by

– Abandoning mark.

– Purchasing conflicting mark.

– Obtaining consent or license to use conflicting


– Obtaining consent or license to use conflicting

mark.

– Filing petition to cancel conflicting mark (e.g., if markis abandoned).

– Filing federal intent-to-use trademark application.

in advance of use to determine registerability and

possible opposition by a third party.

Salt Lake-308824


• FDA has primary responsibility for claims ondietary supplement product labeling, includingpackaging, inserts, and other promotionalmaterials distributed at the point of sale.

SelectingSelecting TrademarksTrademarks––Deceptive ClaimsDeceptive Claims


materials distributed at the point of sale.

• FTC has primary responsibility for claims inadvertising, including print and broadcast ads,infomercials, catalogs, and similar directmarketing materials.


FTC’s Truth-In-Advertising law requires:

1. Truthful and not misleading advertising.



2. Adequate substantiation for all objective productclaims.


• Ad for a product called “Cold Away”

- Carefully evaluate whether mark expressly orimpliedly makes a health claim.

- Must substantiate that the product helps



- Must substantiate that the product helpsprevent colds

COLD

AWAY


Protecting Trademarks Through Registration



What Are the Benefits of Federal Trademark

Registration?



Benefits of FederalTrademark Registration

• Legal presumption of the registrant’s ownership of themark, and the registrant’s exclusive right to use themark nationwide.

• Constructive notice to the public of the registrant’sclaim of ownership of the mark.


claim of ownership of the mark.

• Ability to bring an action concerning the mark in federalcourt.

• U.S. registration can be used as a basis to obtainregistration in foreign countries.

• Ability to file the U.S. registration with the U.S.Customs Service to prevent importation of infringingforeign goods.


Benefits of Federal Trademark Registration–Help from U.S. Customs

• Register trademarked goods withU.S. Customs.– U.S. Customs will monitor ports and seize

counterfeits.


counterfeits.– Provides enhanced penalties: fines and jail

time.– 2005: $93M in counterfeit goods seized.– 2006: $155M in counterfeit goods seized.– 2007: $200M in counterfeit goods seized.– 2008: $272.7M in counterfeit goods seized.– Online form and $190 filing fee.


The Federal Registration Process

• File an application based on actual or intended use.

• Application must include description of goods.

• Applicant must pay filing fee.


• Application is examined by USPTO.

• Application is published for opposition in theOfficial Gazette.

• Registration is valid for 10 years.


Does a Trademark Need to BeRegistered Before It Can Be Protected?



• Federal registration is not necessary to establishrights in a trademark.

• “Common law” rights arise from use of a mark.

• Generally, the first to either use a mark in

Does a Trademark Need to Be RegisteredBefore It Can Be Protected?


• Generally, the first to either use a mark incommerce or file an intent-to-use application withthe USPTO has the ultimate right to use andregistration.

• However, there are many benefits of federaltrademark registration.


Senioruser

Dangers of Failing to Register



Senioruser



Innocent junioruser registers




Senior user’s territory frozenfrom time

junior user registered


Marks Not Allowed Registration

• Immoral, scandalous, or deceptive marks.

• U.S., state, or foreign flag.

• Names of living individuals (withoutpermission).


permission).

• Olympic designations.

• Descriptive or misdescriptive marks.

• Marks similar to marks already registered.


Is a Federal Trademark Registration Valid Outsidethe United States?



Is a Federal Trademark Registration Valid Outsidethe United States?

• No. Certain countries, however, dorecognize a U.S. registration as a basis for


recognize a U.S. registration as a basis forregistering the mark in those countries. Manycountries maintain a register of trademarks.The laws of each country regardingregistration must be consulted.


International Issues

• Federal registration does not give internationalprotection.

• First to use vs. first to register.

• Paris Convention - a U.S. applicant can claim


• Paris Convention - a U.S. applicant can claimdate of U.S. application as priority date forforeign protection if applicant files in foreigncountry within six months of U.S. filing date.

• Community trademark registration-27countries in the European Union.



• Madrid Protocol - allows a U.S. applicant toseek registration in any of the membercountries by filing one application with theUSPTO and designating as many member


USPTO and designating as many membercountries as it chooses.



• Be careful how you describe and classify your products intrademark applications.

• In the U.S., dietary supplement products can be classified withconventional foods in classes 29, 30, 31 and 32, but class 5 isthe most common classification.

• Some foreign examiners view tablet products, and herbal and


• Some foreign examiners view tablet products, and herbal andother supplements as medicinal products, and require theaddition of “for medical purposes” to class 5 descriptions.

• May have to protect supplements in classes 29, 30, or 32, orwork with trademark counsel to craft alternative acceptabledescriptions (e.g., dietary supplement “adapted formedical purposes excluding preparations intended todiagnose, treat, cure or prevent any disease.”).


Protecting Trademarks Through Proper Use



Trademark Use Guidelines

• Use marks consistently – create brand use guidelines.

• Always use marks as an adjective (e.g., ONE A DAY® vitamins).

• Emphasize the marks (e.g., ONE A DAY® brand vitamins).

• Do not pluralize or make a mark possessive (e.g., BURGER KING® restaurantsor BURGER KING® restaurant’s).


or BURGER KING® restaurant’s).

• Use proper trademark notices.

- e.g., use ® if mark is registered, TM for an unregistered mark, and SM for anunregistered service mark.

- e.g., “ONE A DAY is a trademark or registered trademark of BayerHealthcare LLC.”

• Monitor use of trademarks.

• Failure to use properly may result in loss of rights in the mark.


Fighting “Genericide”

ASPIRIN



Additional Ways to Weaken orLose Trademark Rights

• Abandonment.

• Assignment without goodwill (assignment ingross).


• License without quality control (nakedlicense).

• Failure to police and stop infringement.

• Fraud.


Protecting Marks Through Enforcement



Trademark Protection and Enforcement

• Monitor third-party registration and use.

• Demand letters.

• Opposition and cancellation proceedings.


• Trademark infringement litigation.

• UDRP and ACPA.


Trademark Protection and Enforcement

• Monitor third party registration and use.

• Demand letters.

• Opposition and cancellation proceedings.


• Trademark infringement litigation.

• UDRP and ACPA.


Thank You

Michael E. Mangelson ([email protected])Catherine Parrish Lake ([email protected])


Catherine Parrish Lake ([email protected])Joshua G. Gigger ([email protected])

What Every Dietary Supplement Business Should Know About Protecting Brands and Managing Trademark...

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