Using Image Recognition Software for Searching Designs Kent Erickson – Erickson Kernell IP, LLC Ryan Patterson – Trademark.vision/Compumark

Ethical Duty of Technical Competence KS & MO Rules of Professional Responsibility Rule 1.1 Competence A lawyer shall provide competent representation to a client. Competent representation requires the legal knowledge, skill, thoroughness and preparation reasonably necessary for the representation.

Ethical Duty of Technical Competence Comment for both KS & MO rule: To maintain the requisite knowledge and skill, a lawyer should keep abreast of changes in the law and its practice, including the benefits and risks associated with relevant technology, engage in continuing study and education, and comply with all continuing legal education requirements to which the lawyer is subject.

Likelihood of Confusion Analysis Two most important factors in a likelihood of confusion analysis: The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. The relatedness of the goods or services as described in the application and registration(s). In re E. I. du Pont de Nemours & Co.,. 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973)

Other DuPont Factors The similarity or dissimilarity of established, likely-to-continue trade channels. The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing. The fame of the prior mark (sales, advertising, length of use). The number and nature of similar marks in use on similar goods. The nature and extent of any actual confusion. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion. The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark).

DuPont factors (cont.) The market interface between applicant and the owner of a prior mark: (a) a mere "consent" to register or use. (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party. (c) assignment of mark, application, registration and good will of the related business. (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion. The extent to which applicant has a right to exclude others from use of its mark on its goods. The extent of potential confusion, i.e., whether de minimis or substantial. Any other established fact probative of the effect of use.

Taste of Soul paid Legal Zoom $500 for a search The USPTO cleared the mark for publication and published it for opposition.

The Rolling Stones opposed. Taste of Soul abandoned giving up over a year of development and marketing expenses.

Consideration of Fame by USPTO Per du Pont, the "fame of the prior mark" is a factor to be considered in determining likelihood of confusion. In ex parte proceedings, because the examining attorney is not expected to submit evidence regarding the fame of the cited mark, fame is usually treated as a neutral factor in such proceedings. In inter partes proceedings, fame is usually considered more significant. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061 (Fed. Cir. 2012)

Sample Results from Trademark.vision Proposed Logo for medical records software Prior logo for medical records software

Factors for Evaluating Likelihood of Confusion Logo in application for banking services Cited Logo for investment advisory services

Arguments Against LOC Although both for financial services in same class, services are different Sophisticated consumers exercising an elevated degree of care The greater the value of an article the more careful the typical consumer can be expected to be Different Commercial Impressions L’s forming a square v. Stairs in a square

Interplay b/n Trademarks & Copyrights in Design Marks Clients typically do not create and therefore do not initially own copyrights in logos Logo designers may create similar logo for another entity Encourage clients to obtain assignment of copyright, in writing, when using 3rd party designer

Using Copyright to Block Registration of Counterfeit Mark in China

Case Scenario Employee (neither an officer nor manager) selects a logo design for company’s primary mark through online logo design auction service Designer, from foreign country, signs agreement assigning “Intellectual Property Rights” by typing name on digital copy No mention of “copyrights” as part of “Intellectual Property Rights” assigned

Case Scenario Employee signs agreement to acquire “Intellectual Property Rights” by typing employee name on digital copy of agreement without referencing company name. Employer uses logo for goods 3rd party found using identical logo in the US for a single location retail store featuring remotely related goods

What to do? Hope the 3rd party does not have prior use Hope the 3rd party did not obtain a valid assignment of copyright from the designer

Presenters Kent R. Erickson Patent Attorney ERICKSON KERNELL IP 8900 State Line Road, Suite 500 Leawood, KS 66206 (P) 913.549.4700 kre@kcpatentlaw.com