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Intellectual Property Webinar Series
IP Prosecution Pitfalls in Litigation: Trademarks and Copyrights
(Part 2)
April BeslCincinnati, [email protected]
Karen GauntCincinnati, [email protected]
Lynda RoeschCincinnati, [email protected]
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Pitfalls in trademark prosecutions can occur
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Pre-filing
» Searching
Filing
» Preparation of application
Prosecution
» Interaction with USPTO
Post-registration
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Why Does It Matter?
What you say and do in before, during and after prosecution of a trademark and copyright can last forever!
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Lasting Effects?
Opposition Proceedings
Cancellation Proceedings
Litigation
Cease and Desist Letters
Enforcement Actions on the Web
Renewals of Trademarks
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Pitfalls Prior to Filing — Not SearchingTrademark Searching Issues
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Why do we search?» Assess Risk of Use
» Assess Risk of Registration
» Assess Issues That Might be Raised in Prosecution such as
likelihood of confusion, descriptiveness and genericness
» Defense to Willful Infringement Claim
» Save future expense
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What Pitfalls are Avoided by Searching?
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Know the Landscape» Third party uses» Descriptiveness/disclaimer» Genericness» Surname» Geographical indicators
Can modify the mark to make it distinctive and registrable
Can define the goods/services to avoid potentially conflicting marks
Can create a good faith defense
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Preliminary searches
Scope:
» Federal register
» State register
Additional capabilities:
» Foreign countries
Google.com search » Common law usage
» Some internet usage
Full searches scope:
» Federal register
» State registers
» Common law
(product guides, telephone
books, articles)
» Web common law
» Business records
» Domain name registry
» Internet usage
Trademark Searches and Clearance
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Mark » Standard Characters
» Design Element
Drawing
Owner’s Name
Goods/Services
Filing Basis / Use or Intent-to-Use
Date of First Use in Commerce
Specimen
Fee» Depends on the method of application—TEAS, TEASPLUS
Federal Registration Process
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Federal Registration Process
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Prosecution:Currently 3 Months to Initial Review
Office Action Issued
Technical Deficiencies
Description of Goods & Services
Disclaimer Requirement
Substantive Refusal
Likelihood of Confusion with another mark
Descriptiveness / Genericness
Surname refusal
Deceptively Misdescriptive
Geographical Indicators
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Trademark PITFALL #1Filing in the name of the WRONG owner
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Scenario #1
ABC Widgets, Inc., wants to sell a new gadget next year under the
mark WIDEGTA.
Files an intent to use” application with the US Trademark Office but
accidentally files in the name of “ABC Widgets, LLC”
The Statement of Use is rejected for being filed in the wrong name.
What can ABC Widgets do?
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Scenario #1: What can ABC Widgets do?
Certain errors can be corrected by amendment:
1) Name listed is trade name – not a legal entity
2) Name listed is operating division of applicant
3) Name omits minor clerical error – e.g. The or Inc
4) Old name of company listed where change of name took place
before filing
5) Entity listed did not exist
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What if ABC Widgets had filed in the name of it’s sister company DEF Widgets, Inc.?
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Non-Correctable Errors
Certain errors cannot be corrected with an amendment.
In fact! Errors in owner name can VOID an application as filed
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Scenario #1 – One Last Tweak
ABC Widgets, Inc., files an assignment of the intent to use application transferring the mark from its sister corporation to it to try and “fix” the situation.
Will this work?
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Assignment of ITU applications are only allowed to successors in interest of the
business
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Lasting Impact?
Application / Registration vulnerable to opposition or cancellation
Lost registrations and applications negate priority and protection
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How to avoid ownership pitfalls
Ask the right questions!
Who owns the mark?
Have corporations or LLCs been formed?
Have transfers taken place?
Who owns the application?
Discuss intended use with client to guide ownership
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Trademark PITFALL #2
Amendments to the Supplemental Register
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Applications for
merely descriptive marks
can sometimes be amended
to the Supplemental Register.
Still allows for
nationwide priority and
protection
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Scenario #2
Company A and Company B
are competitors in the cleaning
products field.
Both independently create
a new cleaning product under
the mark QUICK DRY CLEAN.
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1/1/2013Company A Files ITU Application
2/1/2013Company B Begins Using Mark
3/1/2013Company B Files Use Application
4/1/2013Company A Begins Using Mark
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Trademark Office issues Office Action on
descriptiveness grounds. In response,
Company A files Statement of Use and
amends the mark to the
Supplemental Register.
All clear for Company A?
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Filing of the amendment
to the Supplemental Register
changes the priority date to the
filing date of the Statement of Use!
Company A is Now the “Junior”
to Company B – Both in Use
AND at the Trademark Office!
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Lasting Impact?
Company A’s application will now be refused for likelihood
of confusion with Company B’s “senior” application
Company B could even stop Company A
from moving forward with product line!
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Perform searches of register before filing amendments to the supplemental register
Discuss risks of descriptiveness with client
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Federal Registration Process
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Be careful when responding to Office Action to avoid statements against interest
Be careful in response to office action when arguing against 2(d) cites
If third party has priority, you may want descriptiveness as a defense
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Trademark PITFALL # 3
Specimens. Specimens. Specimens!
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In order to achieve registration an applicant must show use of the mark in commerce through the filing of a specimen of record
Specimen Must Be Included For Every Class in the Application
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Specimens for Goods:
Must consist of a label, tag, or container or a display associated
with the goods
Can also be websites in certain circumstances
Specimens for Services
Can consist of advertising material
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Beware Token Specimens
Specimens must show actual use in commerce
Cannot be “one off” printings of a single label
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Scenario #3
You Make It We Sell It specializes in retail sale of products ranging from clothing to toys to linens.
As part of its IP strategy, it wants to file applications for the goods it sells, not just its retail services.
Company files to register the mark WHAMMO across six different classes of goods of 50 goods per class.
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For its Statement of Use, You Make It We Sell It includes a picture
of a single label on one product in each Class.
The Statement of Use was accepted and the mark registered
They’re home free right?
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Not So Fast…
Proof of use for all goods may be necessary in enforcement!
Competitor could move to cancel registration for any goods not being used!
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Scenario #3 - Revised
The mark that actually appeared on the label was WHAMMO!
There is NO ISSUE from punctuation, right?
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Little Changes Matter
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Amendments May Be Possible
WHAMMO to WHAMMO!
If the change is not “material” you may be able to amend the application to seek registration of the “altered” mark
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Documentation. Documentation. Documentation.
Strategy for Specimens
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Strategy for Specimens
Understand the importance
of specimens and the rules in play
Having the “hard” talk up front can save
a registration in enforcement later on
“Is this specimen really in use?”
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Post Registration Process:Section 8 Filing (Renewal)
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Between 5th and 6th Anniversary of Registration
» Fee per class: $400
» Specimen of Use in the US
» Declaration of Continued Use
» Opportunity to Revise Protected Goods in Use
» Grace Period for 6 months (additional fee: $100 per class)
» Make sure Mark is same as Registration
» Make sure Goods and Services are same as Registration
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PITFALL # 4: Copyright
Not filing for registration timely
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Registration of a Copyright is not required for protection….
BUT! Failing to file timely can have a lasting impact on lawsuits to enforce that copyright
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Scenario #4: Copyright infringement?
Teri Holmes is a singer songwriter who writes a brand new song called “Teri’s Song” on January 1, 2013. She begins performing the song publicly and is getting a lot of attention and positive feedback.
On June 1, 2013 she discovers a male artist named Johnny Mack is performing and selling a similar song called “Johnny’s Song.” She immediately files a state lawsuit against Johnny for copyright infringement.
She files in State Court
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What did Terri do wrong?
She didn’t file a Federal Registration before filing the lawsuit
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Did You Know?
A Copyright Registration is REQUIRED
to Bring a Federal Lawsuit
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Scenario #4 – RevisedHas Terri done everything right now?
Instead of filing in state court, Teri now files
an expedited copyright application and
then immediately files in Federal court.
She claims statutory damages and
attorneys fees under the Copyright Act.
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No….
She registered after she learned of the infringement and beyond
3-months after publication she cannot claim statutory damages or
attorneys fees in her lawsuit.
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Section 412 of the Copyright Act:
No award of statutory damages or of attorney’s fees for …
Copyright infringement in an unpublished work … before the effective date of its registration
Infringement… after publication and before registration, unless made within 3 months of the first publication.
Therefore Can Only Be Claimed Where:
1) The work was registered prior to the infringement
2) Registered within 3-months of publication
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Strategy for Filing
Consider filing prior to publication or within the 3-month window to be safe
If your work is getting “play” don’t let the 3-month window pass you by!
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PITFALL # 5:
Filing deposits with the US Copyright Office including confidential information
The Scenario:
XYZ Corporation files a copyright application for the code to a piece of software it sells. The code incorporates certain coding that is considered to be a trade secret of the company. When XYZ Corporation uploads a deposit copy of the code, it does not incorporate any redactions.
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By filing the deposit with the Copyright Office, XYZ Corporation destroyed its trade secret rights!
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You must REDACT any confidential or proprietary information!
Clients must understand where IP protections intersect!
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PITFALL # 6: Copyright
Not filing registration in the name of the right owner
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Scenario # 6
John Smith is a software engineer for Widgets USA, Inc. He writes a brand new software program for consumers to measure the effectiveness of the widgets in practice. Widgets USA, Inc. goes to the Copyright Office and mistakenly lists John Smith as the author and claimant.
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Trouble Ahead…
Widgets USA, Inc. couldn’t enforce its copyright without its own software engineer being a plaintiff to the litigation!
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Best Practice: Always Pay Attention to Ownership!
Always pay attention to ownership!
It can be just as troublesome where a company
has an independent contractor do the work without
transferring ownership in the end
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Intellectual Property Webinar Series