Trademarks and Unfair Competition by j. Thomas Mccarthy. Rocheste
Law 227: Trademarks & Unfair Competition
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Transcript of Law 227: Trademarks & Unfair Competition
Law 227: Trademarks &Law 227: Trademarks &Unfair CompetitionUnfair Competition
Loss of Rights, Due Diligence
June 27, 2009
Jefferson Scher
TM & Unfair Comp — Day 9TM & Unfair Comp — Day 9AgendaAgenda
•Loss of RightsGenericism/GenericideAbandonment
Non-use, assignment in gross, naked licensing, failure to police
•Transactional Due DiligenceHypothetical acquisition of Rodeo
Palms
Loss of Rights: GenericismLoss of Rights: GenericismThe End of the SpectrumThe End of the Spectrum
•Some terms start out genericFilipino Yellow Pages: “what-are-you”HOG (large motorcycles)
•Others become generic through usage (trademark owner’s fault??)Shredded WheatAspirin (with the general public)
Loss of Rights: GenericismLoss of Rights: GenericismJudging GenericismJudging Genericism
•Effect of third party non-trademark use: forced genericide of a mark?Stix Products v. United Merchants
Public still recognized CON-TACT as a mark, so could not use the phrase descriptively
Freecycle Network v. OeyEncouraging genericide isn’t “use” so it
doesn’t violate the Lanham Act
Loss of Rights: GenericismLoss of Rights: GenericismProving Public Perception: SurveysProving Public Perception: Surveys
•Key is the term’s primary significanceAsking about generic names for products
75% call a vacuum bottle “a thermos” – OK70-86% would use TEFLON pan when
referring to a nonstick pan – AMBIGUOUSDo you know a brand name? or classify
as brand name or common nameBetter show “lack of trademark significance”
Loss of Rights: GenericismLoss of Rights: GenericismProving Public Perception: Indirect Proving Public Perception: Indirect EvidenceEvidence•Evidence of Advertising?
Welding Services Inc. v. FormanCan’t own “Welding Services Inc.” but what
about WSI? Possible if public perceives WSI as not merely equivalent to the generic
Advertising the acronym next to the phrase fails to prove independent meaning (if anything it hurts by spelling it out for customers)
Loss of Rights: Loss of Rights: AbandonmentAbandonment“Abandonment” of Trademark Rights“Abandonment” of Trademark Rights•Involuntary abandonment
Cease use without intention to resumeAssign mark without goodwillLicense the mark without maintaining
control of the nature and quality of goods on which it is used
Failure to police third party use (infringements)?
Loss of Rights: Loss of Rights: AbandonmentAbandonment“Abandonment” of Rights via “Abandonment” of Rights via AssignmentAssignment•Clark & Freeman v. Heartland
Co.
Transactional Due DiligenceTransactional Due DiligenceOverviewOverview
•Assess risk of TM-related transactionIP aspect of corporate mergers,
acquisitions, and asset purchasesTrademark licenses
Merchandising, franchising, ingredientSettlement deals
Acquisition (sometimes with “license back”) of a registered or common law trademark
Transactional Due DiligenceTransactional Due DiligenceOverviewOverview
•What is due diligence?Verifying seller representations
Title to assetsProper maintenance of assets
Understanding disclosed liabilitiesIdentifying undisclosed risksDischarging a duty of care (Board to
shareholders; experts to company)
Transactional Due DiligenceTransactional Due DiligenceOverviewOverview
•What is it really?Endless rounds of questioning
Enumerating assets, encumbrances, disputes, other liabilities
Drilling down to specificsIndependent investigationEvaluation: how does it
affect the deal?
Transactional Due DiligenceTransactional Due DiligenceKey Trademark InquiriesKey Trademark Inquiries
•Identify trademark assetsRegistrations and applicationsRights established through useRights obtained by license
•Identify relevant agreementsAssignment and licenseCoexistence, consent, and settlement
Transactional Due DiligenceTransactional Due DiligenceKey Trademark InquiriesKey Trademark Inquiries
•Identify disputesPast and present actual disputesPotential disputes
•Identify trademark-like propertiesTrade names, advertising slogansTrade dress/product designDomain names
Transactional Due DiligenceTransactional Due DiligenceKey Trademark InquiriesKey Trademark Inquiries
•Bottom lineCould you obtain title to the asset?Would you be bound by contractual
limitations on your use?Could you use the asset without
infringing the rights of others?Could you stop others from using it?Could you grow the business?
Transactional Due DiligenceTransactional Due DiligenceKey Trademark InquiriesKey Trademark Inquiries
•The real bottom line: How much should you pay for it?
Transactional Due DiligenceTransactional Due DiligenceHypothetical Scenario: Rodeo PalmsHypothetical Scenario: Rodeo Palms
•Acquisition of the RODEO PALMS business — or maybe just the brandBuyer: Elegant Industries (your client)Target: Rodeo Palms Fashions
•Summary took many billable hours to compile, drew on a variety of sources, mined many unruly documents...
Transactional Due DiligenceTransactional Due DiligenceDisclosures and Follow-on Disclosures and Follow-on InvestigationInvestigation•Asset Portfolio
RODEO PALMS26 word mark applications in 16 different
jurisdictionsNotes/Questions
Inconsistent country selection – why?Refused in CH – why?Consent in US – need a copy of the file
Transactional Due DiligenceTransactional Due DiligenceDisclosures and Follow-on Disclosures and Follow-on InvestigationInvestigation•Asset Portfolio
RODEO PALMS FASHIONS Logo8 special form applications in
8 different jurisdictionsNotes/Questions
Inconsistent country selection relative to RODEO PALMS – why?
Transactional Due DiligenceTransactional Due DiligenceDisclosures and Follow-on Disclosures and Follow-on InvestigationInvestigation•Asset Portfolio
TROPICAL SMARTS tag lineCommon law rights based on use in the
U.S. and on the company’s web siteNotes/Questions
Never filed for registration – why?Could be descriptive – enough use for
secondary meaning?
Transactional Due DiligenceTransactional Due DiligenceDisclosures and Follow-on Disclosures and Follow-on InvestigationInvestigation•Asset Portfolio
COOL BREEZE WINDOWCommon law rights based on use in the U.S.
and on the company’s web siteNotes/Questions
Never filed for registration – why?Descriptiveness/secondary meaning issuesStatus on demand letter?!
Transactional Due DiligenceTransactional Due DiligenceDisclosures and Follow-on Disclosures and Follow-on InvestigationInvestigation•Asset Portfolio
Interior and Exterior Store DesignCommon law trade dress rights based
on use in the U.S.; registration refusedNotes:
Applications refused – why?Anything distinctive here?Secondary meaning?
Transactional Due DiligenceTransactional Due DiligenceDisclosures and Follow-on Disclosures and Follow-on InvestigationInvestigation•Asset Portfolio
Bottle and Dispenser DesignsRegistered in the U.S.
Notes:How was use established – was an
appropriate license in place to the perfume manufacturer?
Ditto re: future control
Transactional Due DiligenceTransactional Due DiligenceDisclosures and Follow-on Disclosures and Follow-on InvestigationInvestigation•Asset Portfolio
General questions for each caseWhat is the prosecution history?Are any applications “dependent”
(for example, Madrid Protocol)?Any disclaimers or exclusions?Any oppositions or extensions of the
opposition period?
Transactional Due DiligenceTransactional Due DiligenceDisclosures and Follow-on Disclosures and Follow-on InvestigationInvestigation•Asset Portfolio
More general questions for each caseUsed as required to maintain rights in
the relevant jurisdiction?Recorded with the
U.S. Customs service orother applicable anti-counterfeiting authorities?
Transactional Due DiligenceTransactional Due DiligenceDisclosures and Follow-on Disclosures and Follow-on InvestigationInvestigation•Asset Portfolio
Domain name notesWhat about RodeoPalms.com?Review whois records – show proper
title and control?Follow up on agreements/disputes (our
questionnaire perhaps did not ask for these as explicitly as it should have)
Transactional Due DiligenceTransactional Due DiligenceDisclosures and Follow-on Disclosures and Follow-on InvestigationInvestigation•Agreements
RODEO PALMS CASUALSFR, IT, UK for “clothing”Licensed back to EuroFashion for
“Europe” and “all other countries bordering the Mediterranean”
RPF not to use the identical mark in licensed territory
Transactional Due DiligenceTransactional Due DiligenceDisclosures and Follow-on Disclosures and Follow-on InvestigationInvestigation•Agreements
In-store-boutique “guidelines”Restrictions on mini-store signage and
layout may require changes to standard look and feel of the brand (word mark or Logo) and/or retail concept (trade dress)
LicensesShoes, leather goods, sunglasses, perfume
Transactional Due DiligenceTransactional Due DiligenceDisclosures and Follow-on Disclosures and Follow-on InvestigationInvestigation•Infringement
Inbound mattersOnly Cool Breeze Fashions? Did we
phrase our request broadly enough?Outbound matters
Review counterfeiting cases/strategyReview SMART TROPICAL files –
is the “wait and see” approach justified?
Transactional Due DiligenceTransactional Due DiligenceDisclosures and Follow-on Disclosures and Follow-on InvestigationInvestigation•Infringement
Contact RPF’s outside TM counselCopies of relevant files
Independent investigationTrademark searches in relevant
jurisdictions: analysis & opinionCase law and docket searches
in relevant jurisdictions
Transactional Due DiligenceTransactional Due DiligencePrioritizing and FocusingPrioritizing and Focusing
•A potential filterHistory is on our sideRevenues first
Ensure that there will be a revenue stream, then worry about expenses
“80 - 20”Disregard brand risk affecting less than
20% of revenues
Transactional Due DiligenceTransactional Due DiligencePrioritizing and FocusingPrioritizing and Focusing
•Applying the filterFocus on key marks
RODEO PALMS and the RODEO PALMS FASHIONS Logo
Focus on key marketsUnited States
Focus on key questions...
Transactional Due DiligenceTransactional Due DiligencePrioritizing and FocusingPrioritizing and Focusing
•Key questionsCan Elegant acquire the rights?
RPF’s title to the marksEncumbrances on title
Could Elegant use the marks?Carry on the existing business
Could Elegant stop infringers?Protect market for closely related goods
Transactional Due DiligenceTransactional Due DiligenceUsing a ChecklistUsing a Checklist
•Positive functions of a checklistSets the research agenda
For the acquiror; some parts can be sent to the target
Aids memoryDigression is to be expected, getting
back on course is essentialEnables coordinated delegation
Transactional Due DiligenceTransactional Due DiligenceUsing a ChecklistUsing a Checklist
•Misuses of a checklistUsing it to conduct an interview
Use face time judiciouslyFailing to customize it
Every deal, every target, is differentFailing to follow up on the responses
It’s not about checking off boxes!Have a plan for dealing with revelations
Transactional Due DiligenceTransactional Due DiligenceReal World Problems: “Hard Targets”Real World Problems: “Hard Targets”
•Unable or unwilling to provide infoIgnorance due to turnoverFiles unavailable for acquired brandsActive resistance
•Unable or unwilling to sign offWon’t warrant ownershipUnable to bridge gaps in title due to
departures
Transactional Due DiligenceTransactional Due DiligenceReal World Problems: Mystery & Real World Problems: Mystery & SurpriseSurprise•Expect the unexpected
Abandoned marksForgotten coexistence agreementsUnanswered demand letters
•Accept real-world limitationsLousy domain search toolsStart early and work fast, but expect
lots of delays
Transactional Due DiligenceTransactional Due DiligencePapering the DealPapering the Deal
•Insist on “Goldilocks” paperworkMerger agreement is too convoluted,
the bill of sale is too skimpy... avoid confusion and disclosure of deal terms
•What does seller need to provide?Sign short form(s) of assignmentAncillary authorizing documents,
particularly for foreign marks
Transactional Due DiligenceTransactional Due DiligencePapering the DealPapering the Deal
•This can be a big deal...Different rules in most jurisdictions
Witnesses to the assignmentConsiderationSome require corporate seal
Power of attorney for sellerBusiness/corporate authority
certificates, etc.
Transactional Due DiligenceTransactional Due DiligencePapering the DealPapering the Deal
•Get seller’s signatures at closing!Sellers may retire to a desert island“Further assurances”
don’t guarantee fast turnaround
•But — be practicalConsolidate formsMinimize notarization