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Trademarks 101Trademarks 101and and

emerging trendsemerging trends

IM 350IM 350fall 2015fall 2015day 10day 10

Sept. 29, 2015Sept. 29, 2015

I am here and using a working I am here and using a working clickerclicker

A.A. TrueTrueB.B. FalseFalse

is ais a

A.A. trademark.trademark.B.B. service mark.service mark.C.C. word mark.word mark.D.D. all of the above.all of the above.

In order to be protected by law, a In order to be protected by law, a trademarktrademark

A.A. must be registered at the must be registered at the state or federal level.state or federal level.

B.B. must be used in must be used in commerce in a particular commerce in a particular geographic area.geographic area.

C.C. must match the design must match the design submitted for submitted for registration.registration.

D.D. all of the above.all of the above.

One may use the symbol ®One may use the symbol ®A.A. as soon as one uses the as soon as one uses the

trademark trademark in commerce in a in commerce in a particular geographic area.particular geographic area.

B.B. only after filing a trademark only after filing a trademark application.application.

C.C. only after a trademark only after a trademark application is registered by application is registered by the appropriate the appropriate governmental agency.governmental agency.

D.D. none of the above.none of the above.

One may use the symbol ™One may use the symbol ™A.A. as soon as one uses the as soon as one uses the

trademark in commerce in trademark in commerce in a particular geographic a particular geographic area.area.

B.B. only after filing a trademark only after filing a trademark application.application.

C.C. only after a trademark only after a trademark application is registered by application is registered by the appropriate the appropriate governmental agency.governmental agency.

D.D. none of the above.none of the above.

Which hierarchy is correct, from least Which hierarchy is correct, from least distinctive to most distinctive mark (left distinctive to most distinctive mark (left to right, first to last)to right, first to last)

A.A. fanciful, arbitrary, suggestive, fanciful, arbitrary, suggestive, descriptive, generic.descriptive, generic.

B.B. generic, descriptive, generic, descriptive, suggestive, arbitrary, fanciful.suggestive, arbitrary, fanciful.

C.C. arbitrary, fanciful, suggestive, arbitrary, fanciful, suggestive, generic, descriptive.generic, descriptive.

D.D. none of the abovenone of the above

When a big “junior” trademark user When a big “junior” trademark user saturates the market and overwhelms a saturates the market and overwhelms a small “senior” user the infringement issmall “senior” user the infringement is

A.A. forward.forward.B.B. initial interest.initial interest.C.C. post-sale.post-sale.D.D. reverse.reverse.

The Anti-Cybersquatting Consumer Protection The Anti-Cybersquatting Consumer Protection Act considers the following to be indicative of Act considers the following to be indicative of “a bad faith intent to profit” from marks:“a bad faith intent to profit” from marks:

A.A. offer to transfer domain name to the mark owner offer to transfer domain name to the mark owner or any third party for financial gain without or any third party for financial gain without having used or intended to use domain name to having used or intended to use domain name to offer goods or services.offer goods or services.

B.B. provision of false contact information when provision of false contact information when applying for the registration of the domain name.applying for the registration of the domain name.

C.C. registration or acquisition of multiple domain registration or acquisition of multiple domain names which the person knows are identical or names 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.

D.D. all of the above.all of the above.

The application fee for each new Generic The application fee for each new Generic Top-Level Domain Designation is:Top-Level Domain Designation is:

A.A. $8,500$8,500B.B. $185,000$185,000C.C. $85,000$85,000D.D. none of the none of the

aboveabove

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A trademark is a word, A trademark is a word, phrase, symbol or design, or a phrase, symbol or design, or a

combination of words, combination of words, phrases, symbols or designs, phrases, symbols or designs,

that identifies and that identifies and distinguishes the source of distinguishes the source of the goods of one party from 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 service mark is the same A service mark is the same as a trademark, except as a trademark, except

that it identifies and that it identifies and distinguishes the source distinguishes the source of a service rather than a 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 Before using a mark, or applying to register one, you should search to register one, you should search to see if itsee if it’’s already registered for uses already registered for use

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

• Will pick up Will pick up ““common lawcommon law”” uses uses

• Can be expensive ($400 - $500) per Can be expensive ($400 - $500) per mark searchedmark searched

Trademark Official Gazette Trademark Official Gazette

(TMOG) is published each Tuesday and (TMOG) is published each Tuesday and contains bibliographic information and contains bibliographic information and a representative drawing for each mark a representative drawing for each mark published, along with a list of cancelled published, along with a list of cancelled and renewed registrations. and renewed registrations.

http://www.uspto.gov/learning-and-resources/official-gazette/trademark-official-gazette-tmog

The TMOG is searchable.The TMOG is searchable.

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

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What is use in commerce?What is use in commerce?

For goods: the mark must For goods: the mark must appear on the goods, the appear on the goods, the container for the goods, or container for the goods, or displays associated with the displays associated with the goods, and the goods must goods, and the goods must be sold or transported in be sold or transported in commercecommerce..

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

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

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What is use in commerce?What is use in commerce?

Trademarks cannotTrademarks cannotBe reserved (for future use)Be reserved (for future use)

Although, there is an “intent to Although, there is an “intent to use” process for marks that are use” process for marks that are going to be used in commerce, but going to be used in commerce, but that have not yet been so used; 12 that have not yet been so used; 12 month “hold” by registration.month “hold” by registration.

Protect ideasProtect ideas

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Marks Must Be Marks Must Be ““DistinctiveDistinctive””

Fanciful Arbitrary Suggestive Descriptive Generic/n Generic/y

Fanciful Arbitrary Suggestive Descriptive Generic/n Generic/y

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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 category falls into falls into ““Generic,Generic,”” there is a risk of loss there is a risk of loss of rights. Xerox and Kleenex (for example) of rights. Xerox and Kleenex (for example) have to fight hard to protect their marks.have to fight hard to protect 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. You can establish No. You can establish rights in a mark based rights in a mark based on legitimate use of on legitimate use of

the mark in commercethe mark in commerce..

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

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

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

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Why Register?Why Register?

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

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

the ability to file the U.S. registration the ability to file the U.S. registration with the U.S. Customs Service to with the U.S. Customs Service to prevent importation of infringing prevent importation of infringing foreign goods.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 The cost to apply for a U.S. trademark is

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

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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 Any time you claim rights in a

mark, you may use the "TM" mark, you may use the "TM" (trademark) or "SM" (service (trademark) or "SM" (service mark) designation to alert the mark) designation to alert the public to your claim, regardless public to your claim, regardless of whether you have filed an of whether you have filed an application with the USPTO.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 You may use the federal registration symbol "®" only after registration symbol "®" only after the USPTO actually the USPTO actually registers a registers a markmark, and not while an application , and not while an application is pending. Also, you may use the is pending. Also, you may use the registration symbol with the mark registration symbol with the mark only on or in connection with the only on or in connection with the goods and/or services listed in the goods and/or services listed in the federal trademark registration.federal 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; a listing of the goods or services;

and and the filing fee for at least one class the filing fee for at least one class

of goods or services. of 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 Renewable for successive 10

year periodsyear periods After 5 years, with proper filings, After 5 years, with proper filings,

mark becomes mark 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 Junior user begins to use the same

or similar mark on the same or or similar mark on the same or similar goods or servicessimilar goods or 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 The right to prevent free-loaders from

trading on the mark ownertrading on the mark owner’’s good will s good will and reputation in the market placeand reputation in the market place

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What laws apply?What laws apply? Federal StatutesFederal Statutes

The Lanham ActThe Lanham Act

• 15 U.S.C. §§ 1051 - 1127 State StatutesState Statutes

Counterfeit Trademark ActCounterfeit Trademark Act

• 765 ILCS 1049765 ILCS 1049http://www.legis.state.il.us/legislatio

n/ilcs/ch765/ch765act1040.htm Judicial DecisionsJudicial Decisions

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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 Degree of Care Exercised by

ConsumersConsumers 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 Big Junior saturates market and

overwhelms Small Senior Useroverwhelms Small 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 Addresses the problem of domain

name hi-jackersname hi-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 Register, traffic in or use a domain

name that:name that:

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Liability Under ACPALiability Under ACPA

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

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

(III) is a trademark, word, or name protected (III) is a trademark, word, or name protected by reason of section by reason of section 706 of title 18 or section 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 in domain name; domain name;

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

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

(4) person's (4) person'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 ACPAACPA

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

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

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

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

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

(9) the extent to which the (9) the extent to which the markmark incorporated incorporated in the domain name registration is or is not in 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).

This could change someday (and maybe threaten Mr. Giggle)

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Trademark DilutionTrademark Dilution

Lessening of a famous mark to identify and Lessening of a famous mark to identify and distinguish goods and servicesdistinguish 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

steady growth in the numbers of trademark applications

new generic Top-Level Domain designations (gTLD)

use of trademarks by celebrities and in politics

trademarks in search and keyword advertising using trade dress to protect website designs, inappropriate uses of trademarks in virtual

worlds.