1 Trademarks 101 and emerging trends

2 A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. Trademarks are granted in specific categories Trademarks are granted in geographic areas

3 A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.

4  Kodak  Exxon  Coca  Coca Cola  Mc  Mc Donald’s  Starbucks  Walmart  MTV  Victoria’s  Victoria’s Secret  Polaroid  Xerox  Lego  Beanie  Beanie Babies  Kraft  Playboy  Apple  Dell

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6 Before using a mark, or applying to register one, you should search to see if it’s already registered for use  Trademark Searches Private search firms Private search firms Will pick up “common law” usesWill pick up “common law” uses Expensive ($400 - $500) per mark searchedExpensive ($400 - $500) per mark searched  chss&state=896lck chss&state=896lck chss&state=896lck.1.1

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11 How do I acquire trademark rights?  From use of the mark in commerce Within a particular segment of the economy (as defined by the Trademark office) Within a particular segment of the economy (as defined by the Trademark office) Within a specified geographic area (as specified by where you do business and/or the area for which you apply) Within a specified geographic area (as specified by where you do business and/or the area for which you apply)

12 What is use in commerce?  For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.  For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.  Again, the economic niche(s) and geographic area(s) in question.

Tradmarks cannot  Be reserved (for future use)  Protect ideas 13

14 Mark Must Be “Distinctive” Fanciful Arbitrary Suggestive Descriptive Generic y Generic n

15 Mark Must Be “Distinctive”  Fanciful (Exxon)  Arbitrary (Apple)  Suggestive (Coca-Cola)  Descriptive (Expert Plumbers)  Generic yes (Xerox) When a trademark from “above” category falls into “Generic,” there is a risk of loss of rights. Xerox and Kleenex (for example) have to fight hard to protect their marks. When a trademark from “above” category falls into “Generic,” there is a risk of loss of rights. Xerox and Kleenex (for example) have to fight hard to protect their marks.  Generic no (Tissues)

16 Is registration of a mark required?

17 No. You can establish rights in a mark based on legitimate use of the mark in commerce.

18 Why Register?  constructive notice to the public of the registrant's claim of ownership of the mark;  a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;

19 Why Register?  the ability to bring an action concerning the mark in federal court;  the use of the U.S registration as a basis to obtain registration in foreign countries; and  the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

20 Where to Register?  State Registrations Cheaper (Illinois = $15) Cheaper (Illinois = $15) Statewide protection Statewide protection  Federal Registrations The cost to apply for a U.S. trademark is now $325 per class of goods and services (if you use the electronic filing system). It may be even lower ($275) if the applicant uses a pre- ordained description of good and services The cost to apply for a U.S. trademark is now $325 per class of goods and services (if you use the electronic filing system). It may be even lower ($275) if the applicant uses a pre- ordained description of good and services

21 When can I use the trademark symbols TM and SM?  Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO.

22 When can I use the trademark symbol ®?  You may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

23 What must an application include? the name of the applicant; the name of the applicant; a name and address for correspondence; a name and address for correspondence; a clear drawing of the mark; a clear drawing of the mark; a listing of the goods or services; and a listing of the goods or services; and the filing fee for at least one class of goods or services. the filing fee for at least one class of goods or services.

24 How long does a federal trademark last? 10 years 10 years Renewable for successive 10 year periods Renewable for successive 10 year periods After 5 years, with proper filings, mark becomes “incontestable” After 5 years, with proper filings, mark becomes “incontestable”

25 Trademark Infringement and Dilution

26 What is a trademark Infringement?  Senior user owns mark  Junior user begins to use the same or similar mark on the same or similar goods or services  Likelihood of confusion in market

27 Who is the law protecting?  Consumers The public’s right not to be confused The public’s right not to be confused  Mark owners The right to develop brand awareness The right to develop brand awareness The right to prevent free-loaders from trading on the mark owner’s good will and reputation in the market place The right to prevent free-loaders from trading on the mark owner’s good will and reputation in the market place

28 What law applies What law applies  Federal Statutes The Lanham Act The Lanham Act 15 U.S.C. §§ U.S.C. §§ U.S.C. §§ U.S.C. §§  State Statutes Counterfeit Trademark Act Counterfeit Trademark Act 765 ILCS ILCS htm htm htm htm  Judicial Decisions

29 Lanham Act  (1)  Any person who shall, without the consent of the registrant -  (a)  use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

30 Lanham Act  (b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,

31 Lanham Act  shall be liable in a civil action by the registrant for the remedies hereinafter provided. Injunction Injunction Defendant’s profits Defendant’s profits Plaintiff’s damages Plaintiff’s damages Costs Costs Attorney’s fees (if infringement willful) Attorney’s fees (if infringement willful)

32 Likelihood of Confusion Factors  Similarity of the Marks  Similarity of the Products  Area and Manner of Concurrent Use  Degree of Care Exercised by Consumers  Strength of Plaintiff’s Mark  Actual Confusion  Intent of Defendants

33 Types of Confusion  Forward Small Junior trades off of Big Senior User Small Junior trades off of Big Senior User  Reverse Big Junior saturates market and overwhelms Small Senior User Big Junior saturates market and overwhelms Small Senior User  Initial Interest Confusion that creates an initial customer interest (e.g. meta-tags, domain names) Confusion that creates an initial customer interest (e.g. meta-tags, domain names)  Post-Sale Confusion of someone other than purchaser Confusion of someone other than purchaser

34 Anticybersquatting Consumer Protection Act (ACPA)  Enacted in 1999  Addresses the problem of domain name hi-jackers

35 Liability Under ACPA  Bad faith intent to profit from mark  Register, traffic in or use a domain name that:

36 Liability Under ACPA  (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;  (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or  (III) is a trademark, word, or name protected by reason of section 706 of title 18 or section of title

37 “Bad Faith” Elements under ACPA  (1) trademark or other IP rights in domain name;  (2) domain name consists of legal name of person or name used to identify person;  (3) person's prior use of domain name in connection with offer of goods or services;  (4) person's noncommercial or fair use of the mark in site;

38 “Bad Faith” Elements under APCA  (5) intent to divert consumers from the mark owner's online location to a site accessible under the domain name;  (6) offer to transfer domain name to the mark owner or any third party for financial gain without having used or intended to use domain name to offer goods or services;  (7) provision of false contact information when applying for the registration of the domain name;

39 “Bad Faith” Elements under APCA  (8) registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names;  (9) the extent to which the mark incorporated in the domain name registration is or is not distinctive and famous within the meaning of subsection (c)(1) of this section.

Domains v. Search Terms The 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). See, for example, “Important Ninth Circuit Ruling on Keyword Advertising, Plus Recaps of the Past 4 Months of Keyword Ad Decisions” (very detailed review of a case and the issues, March, 2011, by Eric Goldman).Important Ninth Circuit Ruling on Keyword Advertising, Plus Recaps of the Past 4 Months of Keyword Ad Decisions 40

41 Trademark Dilution  Lessening of a famous mark to identify and distinguish goods and services  Irrespective of: Competition between owner of mark and other parties; or Competition between owner of mark and other parties; or Likelihood of confusion, mistake or deception Likelihood of confusion, mistake or deception

42 Trademark Dilution  “Blurring” distinctiveness of mark  “Tarnishing” reputation of mark

Top Trends In Trademark  Trademark Application Metrics  New gTLD  Political and Celebrity Trademarks  The latest on keyword advertising

Trademark Application Metrics Total number of applications filed in USPTO including all classes on a fiscal year basis

New gTLD  Generic top-level domain names  Instead of.com,.org, and.net, there will be.pepsi,.kodak,.nike etc.  ICANN application fee = $185,000

New gTLD Application Period began on January 12, 2012

Political and Celebrity Trademarks  Celebrities: Sheen Sheen Kardashian Kardashian Snooky Snooky Paris Paris  Political TMs Seal Team 6 – Disney Seal Team 6 – Disney Occupy Wall Street Occupy Wall Street

The Latest in Keyword Advertising

To win on infringement, plaintiff must show: 1) it has a valid, registered trademark that is entitled to protection; 2) that defendant used the mark; 3) that the use was in commerce; 4) that the use was in connection with the sale or advertising of goods or services; and 5) that the use was without plaintiff’s consent.

The Latest in Keyword Advertising  Legal question: is employing a word or phrase in keyword advertising “use in commerce” that would trigger trademark infringement?

The Latest in Keyword Advertising  Answer: Yes Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2d Cir. 2009) Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2d Cir. 2009) Fair Isaac Corp. v. Experian Information Solutions, Inc., 645 F. Supp. 2d 734, 760 (D. Minn. 2009) Network Automation, Inc. v. Advanced Systems Concepts, 638 F.3d 1137, 1145 (9th Cir. 2011)

The Latest in Keyword Advertising  Notwithstanding the fact that keywords have been found to be used in business, websites have yet to lose a major case  Amazon's Merchandising of Its Search Results Doesn't Violate Trademark Law Amazon's Merchandising of Its Search Results Doesn't Violate Trademark Law Amazon's Merchandising of Its Search Results Doesn't Violate Trademark Law  It's Legally Okay if Google Thinks Your Name and Erectile Dysfunction Drugs Have Something to Do With Each Other It's Legally Okay if Google Thinks Your Name and Erectile Dysfunction Drugs Have Something to Do With Each Other It's Legally Okay if Google Thinks Your Name and Erectile Dysfunction Drugs Have Something to Do With Each Other  Google settles Rosetta Stone lawsuit, its last major dispute over AdWords Google settles Rosetta Stone lawsuit, its last major dispute over AdWords Google settles Rosetta Stone lawsuit, its last major dispute over AdWords 52