Nuts & Bolts of Trademarks

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NUTS & BOLTS OF TRADEMARKSIP -101 2016 SERIES

Premier date: April 21, 2016

Premier Date: April 21, 2016


IP -101 2016 SERIES

NUTS & BOLTS OF TRADEMARKS

WE WOULD LIKE TO TAKE THIS OPPORTUNITY TO THANK OUR SPONSORS



meet the facultyPANELISTS

Eric Curtin Crawford MaunuKal K. Shah Locke Lord LLPDarren Spielman Kain Spielman, P.A.

MODERATOR William C. Spence SpencePC


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about this webinarTrademarks are words, pictures, or the look and feel of an item that customers use to identify goods or services. A successful business spends significant time and money so that its customers come to identify the business name with the goods or services that the business provides. This webinar discusses the requirements for trademark protection, the rights conferred by trademarks, and the steps necessary to obtain and enforce trademarks.

about this seriesThe United States’ intellectual property (IP) laws have undergone fundamental changes over the past several years, but more changes may be on the way. Clearly, IP rights foster human ingenuity, innovation, and creativity. But some complain that IP rights also enable certain individual and companies to prosper financially more than they should. So, what exactly are IP rights? And how might they affect you or your company. Join some of the leading attorneys in the World, as they discuss—in plain English for the non-expert—the basics of U.S. IP laws.

As with all Financial Poise webinars, each episode in the series is designed to be viewed independently of the other episodes, and listeners will enhance their knowledge of this area whether they attend one, some, or all of the programs. © 2016 DailyDAC, LLC d/b/a/ Financial Poise™ 7

episodes in this series

EPISODE #1 IP- What Every Lawyer & Client Must Understand

1/28/2016

EPISODE #2 Nuts & Bolts of Patents 2/22/2016

EPISODE #3 Nuts & Bolts of Copyrights

3/17/2016

EPISODE #4 Nuts & Bolts of Trademarks 4/21/2016

EPISODE #5 Nuts & Bolts of Trade Secrets 5/26/2016Dates above are premier dates All webinars also available On Demand through West LegalEd Center and Vimeo



What is a Trademark?A trademark identifies the source of a good or service used in commerce. • Names, brands, words, or phrases (e.g., APPLE®, Apple’s

iPod, or McDonald’s slogan I’m Lovin’ It)• Symbols or shapes (e.g., Nike’s Swoosh or GEICO’s Gecko)• Trade-dress or product, package, or store design (e.g., 7-

Eleven store design) • Sounds, scents, or textures (e.g., NBC chimes) N.B. People may use the term “service mark” to refer to a mark that identifies a service and the term “trademark” to refer to a mark that identifies a good. We use “trademark” in this presentation to refer to a mark that identifies either a good or service.


Purpose of Trademarks • Trademarks promote a consumer’s ability to

identify a business’s goods or services.

• Trademarks protect a business’s goodwill, reputation, and brand identity.

• Trademark law prohibits a person or business from using the same or a confusingly similar mark, preventing consumer confusion.


Trademark RequirementsA trademark must be used in commerce and be distinctive to receive protection. A hierarchy of distinctiveness exists to determine the strength of a mark. • Fanciful (e.g., EXXON)• Arbitrary (e.g., APPLE)• Suggestive (e.g., MICROSOFT)• Descriptive (e.g., SHARP for TVs)• Generic (e.g., ASPIRIN and CELLOPHANE)


Trademark Requirements: Distinctiveness Continuum

At one extreme are marks that, when used in relation to the goods or services are completely arbitrary or fanciful.

• Fanciful marks are words or terms that have been made-up or invented for the sole purpose of functioning as a trademark. Such marks comprise words that are either unknown (e.g., EXXON, KODAK, PEPSI) or are completely out of common usage (e.g., FLIVVER).



At one extreme are marks that, when used in relation to the goods or services are completely arbitrary or fanciful.

• Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey).


Next on the continuum are suggestive marks• Suggestive marks are those that, when applied to the

goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or service.

• Suggestive marks, like fanciful and arbitrary marks, are registrable without proof of secondary meaning. Secondary meaning is proof that a mark has become distinctive as applied to the applicant’s goods or services in commerce.



Next on the continuum are merely descriptive marks:• Marks are refused registration if the mark is merely

descriptive. A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. (e.g., BED & BREAKFAST REGISTRY is merely descriptive of lodging reservations services).

• The determination of whether a mark is merely descriptive must be made in relation to the good or services for which registration is sought, not in the abstract.



Finally, generic terms for goods or services are at the opposite end of the continuum from arbitrary or fanciful marks. • Generic terms are terms that the purchasing

public understands primarily as the common or class name for the goods or services.

• Generic terms are incapable of functioning as registrable trademarks denoting source, and are not registrable.



TRADE DRESSTrade dress includes the packaging, dressing, or design of a product. Trade dress is typically defined as the total image and overall appearance of a product, or the totality of the elements, including features such as size, shape, color or color combinations, texture, and graphics.


TRADE DRESSTrade Dress Functionality Doctrine:• A feature that is essential to the use or purpose of the

article or that affects the cost or quality of the article is a functional feature, which cannot serve as a trademark / trade dress.

• This doctrine is intended to encourage legitimate competition by striking a balance between trademark law and patent law.


Limitations on Trademarks• First Sale Doctrine: A business may resell and

distribute a trademarked good without infringing because the article that bears a trademark does not deceive consumers. However, the resold goods must not be materially different from those purchased from the trademark owner.

• Acquiescence: An affirmative defense to trademark infringement. An owner represents that a party can use the mark; the party relies on that representation; and the party would suffer prejudice if it were not permitted to use the mark.


Limitations on Trademarks

• Descriptive Fair Use: A good faith use by a party of a trademark to describe its goods or services does not constitute infringement.

• Nominative Fair Use: A party’s use of a trademark to refer to a manner that is not deceptive or likely to cause confusion.


TRADEMARK OWNERSHIP AND REGISTRATION

Trademark rights and ownership are acquired through actual use of the mark in commerce. The first person to use the mark in commerce has priority to use the mark.

Tacking Doctrine:• An trademark owner that adopts a legally equivalent

new mark that is similar to its earlier mark such that consumers regard the two marks as essentially the same. The owner may relate or tack the date of its first use of the earlier mark to the new mark.



Registration of a trademark is not necessary, but registration provides benefits to the owner.

• Nation-wide notice and constructive use. A registered mark is deemed to have been in use throughout the United States as of the application filing date such that it will have priority over a confusingly similar mark.



Benefits of registration (continued):• Right to use the registered trademark symbol ®.• Discourage others from using the trademark. • Allows the U.S. government to block knock-offs

and imports that unlawfully use the mark. • Provides benefits related to foreign registration.



Benefits of registration (continued):

• Validity of ownership, heightened protection after five years, and a possibility of the mark becoming “incontestable.”

• Right to obtain enhanced damages and attorneys’ fees in some cases.

• Provides the ability to obtain statutory damages in counterfeiting cases.


TRADEMARK InfringementThe Lanham Act governs actions related to trademarks.

Trademark infringement occurs when a party uses a mark, without authorization, in connection with goods or services that is likely to cause confusion, deception, or mistake about the source of the goods or services.

The determination of a likelihood of confusion is dependent on a number of factors (e.g., the strength of the mark, the proximity of the products, the degree of similarity between the marks, the quality of the defendant’s product, and the sophistication of the buyers).

More About The Faculty: D

WILLIAM C. [email protected]

William Spence assists individual and business clients to obtain their best possible outcome in contentious legal matters. He has extensive experience in litigation, arbitration, and mediation involving all areas of intellectual property law. A registered patent attorney, Mr. Spence serves clients by providing advocacy and advice in the areas of: patent infringement; trade secret misappropriation; unfair competition (including conspiracy, tortious interference, and related antitrust claims); breach of contract; post-grant patent proceedings (e.g., inter partes review) ; trademark infringement; and copyright infringement.

He has litigated claims in both state and federal courts throughout the United States. Additionally, Mr. Spence has extensive experience with patent monetization strategies and complex, international patent infringement litigation involving multiple parties and jurisdictions, most notably including Japan. He is a published author and frequent speaker on patent monetization and other intellectual property issues, and has been repeatedly recognized as an “Illinois Rising Star” and “Illinois Star,” in the area of intellectual property.

Mr. Spence is a graduate of the University of Notre Dame, where he obtained separate Bachelor of Science Degrees in Chemical Engineering and Biophysics (“Physics in Medicine”). As a student he received the distinction of Notre Dame Scholar and also earned the Monogram Award. Upon graduation from Notre Dame, Mr. Spence received his commission as a Second Lieutenant in the United States Air Force, Medical Service Corps. After completing his military service, he worked for several years in the chemical industry before pursuing his legal education at the University of Houston Law Center.

Prior to forming SpencePC, Mr. Spence spent twelve years practicing law with Kirkland & Ellis LLP in Chicago, IL and Tokyo, Japan.



ERIC [email protected]

Eric’s practice has included the preparation and prosecution of patent applications in the electronic, electromechanical, biomedical, chemical and optical technology areas, and further in the area of computer-implemented/software inventions. Eric also assists clients in the procurement of trademarks and copyrights, and with various aspects of trademark and copyright law including oppositions, cancellations, and license agreements. He maintains a robust practice in client counseling, including opinions of infringement/invalidity.Eric leads his firm’s legal education efforts, has authored multiple intellectual property articles, and serves as an expert on nationally-broadcast panels concerning patent, trademark and copyright matters. His recent article Functional Claiming Under U.S. Patent Law has been published by the International In-house Counsel Journal.

Technically, Eric has significant experience in various cross-disciplinary fields including those involving wireless communications technologies, semiconductors, medical/biological devices, thin-film transistors, solar cells, proteomics and nanotechnologies. He has worked extensively in the semiconductor design, physics and materials science fields, and in a variety of communications fields involving mobile electronics, video processing, and media content streaming.

Prior to entering the legal profession, Eric worked in engineering and research areas for the automotive and plastics industries. He is experienced in prototype modeling, failure analysis, and in the design, installation, and operation of electronic controls, robotics and communications systems.In addition to his legal and industry experience, Eric is involved with non-profit and community organizations, serving on the board of directors for two Minnesota-based non-profit organizations that promote youth athletics.

Eric has engineering and law degrees from the University of Wisconsin at Madison. He is licensed to practice law in several state and federal courts and is a registered patent attorney.


https://www.iicj.net/library/detail.asp?key=870

https://www.iicj.net/library/detail.asp?key=870



KAL [email protected]

Kal K. Shah is an partner in the Chicago offices of Locke Lord LLP, an international law firm with over 500 attorneys. He represents clients in patent and trademark litigation in a variety of technical areas including life sciences, electrical and computer systems, and wireless technologies. Kal’s litigation experience and scientific training allow him to identify quickly core intellectual property issues and devise creative strategies in response. Kal also has substantial experience litigating contract and licensing disputes as well as other commercial litigation matters.

In addition, Kal assists clients in formulating and implementing successful IP strategies. This entails a variety of approaches and may include review and analysis of IP portfolios, negotiating and drafting licensing, IP target identification and evaluation, and patent prosecution.

Kal intermittently serves as an adjunct professor at Loyola University Chicago School of Law where he teaches patent litigation.



DARREN [email protected]

Darren Spielman is a Shareholder of Kain Spielman, P.A. He concentrates his practice in the field of intellectual property, with an emphasis on trademarks, trade secrets, domain name disputes, copyrights, libel and defamation. Darren has a Bachelor of Science in Public Relations from University of Florida. He also earned a Masters in Mass Communications degree from the University of Florida, as part of a joint degree with the University of Florida Levin College of Law. Darren also completed the Intellectual Property Certificate Program during law school. Darren is admitted to practice in front of the U.S. District Court for the Northern District of Florida, Southern District of Florida, and Middle District of Florida and the Eleventh Circuit Court of Appeals. Darren is a member of the Intellectual Property Committee and the Computer Law and Technology Committee of the Business Law Section of the Florida Bar. Darren has been honored with the Super Lawyers Rising Stars Award for 2009, 2010 2011, 2013 and 2014 and also received Top Attorneys Florida Outstanding Young Lawyers Award for 2011, 2013, and 2014

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Important Notes

• THE MATERIAL IN THIS PRESENTATION IS FOR GENERAL EDUCATIONAL PURPOSES ONLY.

• IT SHOULD NOT BE CONSIDERED LEGAL, INVESTMENT, FINANCIAL, OR ANY OTHER TYPE OF ADVICE ON WHICH YOU SHOULD RELY.

• YOU SHOULD CONSULT WITH AN APPROPRIATE PROFESSIONAL ADVISOR TO DETERMINE WHAT MAY BE BEST FOR YOUR INDIVIDUAL NEEDS.