Trademarks

Kieran G. Doyle

Long Island Import Export Association

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Types of Trademarks WordsWords LettersLetters SymbolsSymbols SlogansSlogans Numbers Numbers ShapesShapes Fragrance Fragrance ColorsColors CharactersCharacters SoundSound Design (Trade Dress)Design (Trade Dress)

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Examples- Words

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Examples- Slogans

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Examples- Proper names

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LETTERS

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LOGOS

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Examples- Characters

Types

ShapesShapes

FragrancesFragrances

ColorsColors

SoundsSounds

TasteTaste

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Trade Dress

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What is it? What is it? How do you protect it?How do you protect it?

Filing Federal Application

United States Patent and Trademark OfficeUnited States Patent and Trademark Office Principal Register – for distinctive marksPrincipal Register – for distinctive marks Supplemental Register – for descriptive marksSupplemental Register – for descriptive marks

Basis of ApplicationBasis of Application Use in commerceUse in commerce Intent to useIntent to use Priority based on foreign application or Priority based on foreign application or

registrationregistration

Benefits of Federal Registration

Constructive notice to third partiesConstructive notice to third parties Constructive nationwide date of first useConstructive nationwide date of first use Prima facie evidence of validity of markPrima facie evidence of validity of mark Mark may become “incontestible”Mark may become “incontestible” Registration with U.S. Customs and Border Registration with U.S. Customs and Border

ProtectionProtection

Likelihood of Confusion–Factors

strength of plaintiff’s mark strength of plaintiff’s mark the degree of similarity between the two the degree of similarity between the two

marksmarks the proximity of goods or services of the the proximity of goods or services of the

partiesparties the likelihood that the plaintiff will bridge the likelihood that the plaintiff will bridge

the gap between the productsthe gap between the products evidence of actual confusionevidence of actual confusion defendant’s intent in adopting its markdefendant’s intent in adopting its mark the quality of defendant’s productsthe quality of defendant’s products sophistication of the relevant consumerssophistication of the relevant consumers

The factors are to be balanced;The factors are to be balanced;no one factor is determinative.no one factor is determinative.

What is a Statutory Fair Use?

1.1. Mark is descriptive if and used only to Mark is descriptive if and used only to describe Defendant’s goods or servicesdescribe Defendant’s goods or services

2.2. Term is used in good faithTerm is used in good faith

3.3. Term is used fairlyTerm is used fairly

““Nominative Fair Use”Nominative Fair Use”

1.1. The product or service in question must be one The product or service in question must be one not readily identifiable without use of the not readily identifiable without use of the trademark;trademark;

2.2. Only so much of the mark or marks may be used Only so much of the mark or marks may be used as it is reasonably necessary to identify the as it is reasonably necessary to identify the product or service; andproduct or service; and

3.3. The use must do nothing that would, in The use must do nothing that would, in conjunction with the mark, suggest sponsorship conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.or endorsement by the trademark holder.

New Kids on the BlockNew Kids on the Block 971 F2d 309 (9 971 F2d 309 (9thth Cir. 1992) Cir. 1992)

Anthony Orosz Anthony Orosz Assistant Director, Pharmaceutical CEEAssistant Director, Pharmaceutical CEE

Anthony.orosz@dhs.govAnthony.orosz@dhs.gov646-733-5106646-733-5106

Partnering with US Customs and Border Protection

for Maximum IP Protection

CJ Erickson

Long Island Import Export Association

Scope Customs is a “police force” for 40

government agencies regulating both import and export

Why have a Customs strategy?

FTC: FTC: Made in USA standardMade in USA standard

USDA:USDA: quota/licenses/permitsquota/licenses/permits

CPSC:CPSC: children’s productschildren’s products

FDA:FDA: food, drugs, cosmetics, and food, drugs, cosmetics, and medical devicesmedical devices

NRC:NRC: watches with tritiumwatches with tritium

USPTO:USPTO: trademarks and copyrightstrademarks and copyrights

DOD:DOD: ITARITAR

DOC:DOC: Bureau of Industry and Bureau of Industry and SecuritySecurity

BOC:BOC: AES electronic data filingAES electronic data filing

OFAC:OFAC: Sanctions programs Sanctions programs

CBP IPR Protection

CBP devotes substantial resources to protecting intellectual property rights

CBP is vested with the authority to:

Exclude goods from entry

Detain merchandise

Seize merchandise

Forfeit counterfeit goods

Penalize violators

CBP Enforcement Strategy

CBP policy is a two-tiered enforcement approach Recordation of a registered trademarkRecordation of a registered trademark

Open and on-going communication with Open and on-going communication with trademark ownerstrademark owners

Submission of information and documentation identifying and describing both the mark and the filer.

Paper Electronically - https://apps.cbp.gov/e-recordations/

Fee of $190 for recordation of each trademark registration in a single class.

Additional $190 fee for each additional class of goods covered by a registration.

Recordation of Trademark with Customs

Supplemental Information

Educate Customs on what your products look like and how they come into the country

How to Identify Your Goods Samples of imported merchandise

Packaging

Detailed specifications, drawings, sketches and schematics

Copies of sewn-in labels, hangtags and markings RN number Fiber content Tracking label Country of origin

Exact size, color, and location of the mark

Mark and Product Features:

Location of mark on product

Product quality and overall appearance

Trim features such as zippers, buttons and snaps

Sample labels and tags

Shapes

How are Your Goods Imported? Copies of representative shipping documents,

packing methodology

Schedules of legitimate sources, authorized manufactures, channels of trade

List of suspected counterfeiters and suspected ports of entry

Disclosures of Information to Trademark Owners

Upon a counterfeit determination, CBP will disclose to rights owners the following information: Date of Importation Port of Entry Description of Merchandise Quantity Involved Name and Address of Manufacturer Country of Origin of Merchandise Name and Address of Exporter Name and Address of Importer

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Real or Counterfeit?Real or Counterfeit?

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Authentic LUGZ have: Counterfeit LUGZ have:

Black detailed tongue label Generic white tongue label

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Conclusion Trademark owners are entitled to significant Trademark owners are entitled to significant

protection from CBP at minimal cost but protection from CBP at minimal cost but need to be pro-activeneed to be pro-active

Registered trademarks should be recorded Registered trademarks should be recorded with Customs to ensure maximum benefits with Customs to ensure maximum benefits under relevant statutes and regulationsunder relevant statutes and regulations

Proper recordation should be part of any IPR Proper recordation should be part of any IPR plan to:plan to: Safeguard against unauthorized importsSafeguard against unauthorized imports

Strengthen license and distribution Strengthen license and distribution agreementsagreements

Establish a strong basis for civil and criminal Establish a strong basis for civil and criminal actions against suspected infringersactions against suspected infringers