Bar News - June 21, 2017
Intellectual Property Law: Locking It Up: Trademark Tips and Traps for the General Practitioner
By: Peter Kunin
Trademarks are among the most valuable assets owned by companies that focus on individual consumers – from breweries to start-up app developers. Trademarks protect brands and can be found in the form of words (COCA COLA), symbols (Nike’s swoosh), and slogans (SHAVE TIME. SHAVE MONEY owned by Dollar Shave Club).
Trademark owners have two major goals: “defensive” and “offensive.” The “defensive” goal is to ensure a company can fend off allegations of trademark infringement and can continue to use the brands in which it has invested. The “offensive” goal is ensuring that the trademark owner can stop other companies from using brand names that are confusingly similar to the trademark owner’s brands.
If a trademark owner’s business is successful – particularly in industries with low barriers to entry – late-comers will almost inevitably try to ride on their reputation by imitating the trademark owner’s brand. With some advance planning and periodic, modest investment in legal fees, many trademark-related problems can be avoided.
One of the most powerful tools available to trademark owners is the US Patent and Trademark Office’s (USPTO) online TESS database at www.uspto.gov. This search engine enables anyone to quickly search for identical trademark registrations and pending applications. This is a vital first step in the trademark clearance process – the process by which a trademark professional can assess whether a proposed trademark is available for use, and is likely to be approved for registration by the USPTO.
The TESS search engine, however, often fails to uncover highly similar, problematic marks that are spelled differently. For example, a client who wants to launch a brand of children’s clothing called TISKET will not uncover a prior registered mark for TISQUETTE using TESS. A trademark professional can help assess options for more in-depth searching.
What to Register?
Trademarks often are depicted in a design format, or nested with designs. For example, the trademark COCA COLA is often depicted in 1890s cursive style. Many beer brands incorporate images of animals, landscapes, etc. on their labels. But should the entire label be registered as a trademark?
Companies like The Coca Cola Company will often register everything in separate trademark applications – the words alone, and a second trademark application for a word and design composite, known as a lock up.
If a trademark owner has a limited budget, always apply to register the mark in all capital letters, without any font style or other design elements. In trademark parlance, this type of trademark is referred to as a “standard character mark.” Additional trademark applications can be filed later, when the budget permits.
A federal trademark registration for a standard character mark entitles the owner to use and protect the word mark in any font style, size, or color. Thus, the standard character mark provides broader defensive protection – irrespective of how the trademark owner changes the “look and feel” of the mark over time. The standard character mark also provides offensive protection, insofar as the owner can go after other companies who use the same or a similar word mark but depict it in a different style.
Finally, to maintain a federal registration, the trademark owner must provide the USPTO evidence of how the mark is used with customers (at the 6th anniversary after registration and at every 10th anniversary). If a trademark owner initially registered a mark in a specific color and font, but 10 years later the brand has been “refreshed” with new colors and style, that trademark registration likely cannot be renewed. By contrast, a standard character mark is easily renewed if any form of the words are still in use as a trademark.
Federal Trademark Application
The federal intent to use trademark application (ITU) is an enormously valuable tool for trademark owners. Ideally, a company considering launch of a new brand would file an ITU trademark application at least four months before a final decision is made on branding a new product or service. When a federal trademark application is filed, it currently takes the USPTO three or four months to review the application and provide some feedback, in the form of an “Office Action.”
The Office Action informs the applicant whether there are minor administrative problems (e.g., the description of products is vague and needs to be refined) or substantive problems (the USPTO has refused registration based on a conflict with a prior confusingly similar registered trademark). If the Office Action finds no substantive problems, then the company can enjoy a level of assurance that they can eventually secure a federal trademark registration, once they launch the brand into the marketplace and submit evidence of use to the USPTO.
Steer Clear of Trademark Bullies
After a federal trademark application is approved by the USPTO, other companies have the opportunity to block registration through an administrative proceeding within the USPTO called an opposition action.
Many large consumer products companies are notorious for bringing opposition actions to block trademark applicants, even when consumer confusion is highly doubtful. For example, the Monster Energy Company, maker of energy drinks, files a huge number of opposition actions against trademark applicants that incorporate the word MONSTER into their trademarks.
Trademark owners, particularly small businesses with limited budgets, can minimize the risk of an opposition action by selecting brand names that are not even close to marks owned by the largest consumer products companies. A quick Internet search for “trademark bullies” can help locate some of the most aggressive trademark owners.
Don’t Forget Foreign
Almost all foreign countries do not require evidence of use of the mark (i.e., sales of the products or service under the brand name) in order to secure a trademark registration. This sets up a race to file: first to file secures the trademark registration. This risk is somewhat mitigated by the 6-month priority rule. As long as a US company files a foreign application within 6 months of the U.S. filing date, the foreign application will be deemed filed on the date the U.S. application is filed.
Care and Feeding
Finally, just like a car that needs an oil change, a company’s trademark portfolio requires periodic maintenance. Trademarks need to be renewed. New trademarks should be filed before new products are launched. Foreign trademark applications should be filed in advance of expansion into foreign markets. Regular meetings with a trademark professional can help ensure that a company’s trademarks get the care and feeding they need.
Peter Kunin is director and deputy managing partner at Downs Rachlin Martin.