Overview of U.S. Trademark and Copyright · Thank you! 52

Overview of U.S. Trademark and Copyright

July 15, 2016

Susan Neuberger Weller

Member

IP Summer Academy 2016


Boston, Massachusetts

July 11 – 22, 2016


© 2016 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.

What We Will Try to Cover

2

• Trademarks

•Domain Names

•Copyright

•Digital Millennium Copyright Act



July 11 – 22, 2016



Trademarks – Definitions

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• Trademark: any word, name, symbol, or device, or any combination thereof … used … to

identify and distinguish … goods from those manufactured or sold by others and to indicate

the source of the goods even if the source is unknown. A service mark is used in the same

manner to advertise and offer services.

– Kodak® brand film

– Spotify® music services

– Coca-Cola® bottle shape

– Teflon® brand polytetrafluoroethylene

– Harley-Davidson motorcycle engine sound

– Registered building design/shape for the Apple store

– Registered color pink for Owens-Corning building insulation and other products



July 11 – 22, 2016



Trade Dress

4

• Trade dress:

– The totality of elements in which a product or service is packaged or presented

– Trade dress is protectable when the elements combine to create the whole visual image presented to

consumers, which is capable of acquiring exclusive rights as a trademark



July 11 – 22, 2016



Trademarks - Building Brand Value

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•Consumers rely upon a brand name or trademark to help them choose a product or service in

a marketplace of competitors

•A trademark communicates information about the source and implies an assurance of quality

for a product

•A brand is established in the mind of a consumer through the consistent use of trademarks,

trade or company names, trade dress, domain names

• The worth of a trademark, through use and promotions, establishes brand equity

•Brand equity includes consumer loyalty, awareness and expectation of quality



July 11 – 22, 2016



Trademarks --- Building Brand Value

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• The value of a famous brand can be substantial, for example:

– The APPLE brand was estimated to have a market cap of over $517 billion (2016)

– The MICROSOFT brand was estimated to have a market cap of over $404 billion (2016)

– The IBM brand was estimated to have a market cap of over $145 billion (2016)

– The GOOGLE/ALPHABET brand was estimated to have a market cap of over $479 billion (2016)

– The AMAZON.COM brand was estimated to have a market cap of over $348 billion (2016)

Sources: NASDAQ, NYSE, Reuters, Forbes.



July 11 – 22, 2016



Trademarks – Spectrum of Distinctiveness

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• The most extensive protection is offered to marks that are considered unique, fanciful,

arbitrary, or are coined terms. These are the strongest marks

• Examples:

– APPLE for computers

– BLACKBERRY for personal data devices

– NIKE for athletic shoes

– AMAZON.COM for on-line bookstores

– KODAK for camera and photography film

– SPOTIFY music services



July 11 – 22, 2016



Trademarks – Spectrum of Distinctiveness (cont’d)

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•Protection is also relatively strong for marks that suggest, but do not describe, a characteristic

of the product – if a “mental leap” between the term and the product’s attribute is not

almost automatic, this type of mark is suggestive

• Examples:

– SPARKLE for window cleaner

– ORACLE for computer software

– PENGUIN for food freezers



July 11 – 22, 2016



Choice of a Mark

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• Spectrum of Distinctiveness

Generic Descriptive Suggestive Arbitrary Fanciful Scope of Protection Weak ---------------------- Strong

•Distinctiveness versus Descriptiveness

•Connotation

• Foreign Equivalents



July 11 – 22, 2016



Trademarks – Unprotectable Terms

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•Cannot Register:

– Words that describe a product or product characteristic, ingredient, function or purpose

– Term that is primarily merely a surname

– Word that is geographically misdescriptive

– Mark that is immoral, scandalous

– Mark that is a flag, coat of arms or other symbol of the U.S., state, municipality or foreign nation

– Mark that is functional (e.g., product configurations)

– Mark that, when applied to the goods or services, is so close to an existing mark as to cause a likelihood of

confusion as to source



July 11 – 22, 2016



Trademark Clearance

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•Consider at least several candidates

•Preliminary versus “full” searching

• Free screening tools:

– U.S.: www.uspto.gov

– E.U.: http://oami.europa.eu/en/database/ctm-online.htm

– Madrid System:

www.wipo.int/ipdl/en/search/madrid/search-struct.jsp

•Commercial screening tools, e.g., www.saegis.com

•More comprehensive, or “full,” searches



July 11 – 22, 2016



Trademarks – Process for Acquiring Rights

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•U.S. law trademark rights are acquired through:

– Actual use of mark to identify your goods or services

– A bona fide intent to use the mark, established by a concurrent application filing at the U.S. Patent and

Trademark Office, followed by subsequent use of the mark in the U.S.

– A bona fide intent to use the mark, established by a concurrent application filing at the USPTO by applicant

whose country of origin is a party to treaty that provides for registration based on foreign ownership,

together with registration in country of origin

– A request for extension of protection of an international registration to the United States

•Unregistered use of the trademark in U.S. commerce is recognized as a “common law” use

and creates rights in the area in which the mark is used on products sold or services provided



July 11 – 22, 2016



Trademarks – Source for Protection

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• In the U.S., the following are sources for the protection of trademark rights:

– Constitution, Art. 1, § 8, Cl. 3 (Commerce Clause)

– the Lanham Act. 15 U.S.C. §1051 et seq.

– the Federal Trademark Dilution Act

– state law

– common law

– international treaties that recognize international trademark filings as a basis for rights



July 11 – 22, 2016



Trademark Systems Compared – When Rights are Created

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• The majority of countries worldwide recognize rights at the date of application filing – they are

“first to file” countries

•Most common law-based countries and a few other countries recognize trademark rights at

the initiation of use – “first to use” countries include the U.S., Australia, Canada, Malaysia, New

Zealand, Israel, the Philippines and Singapore

• International trademark filing tools for registration in multiple countries:

– Community Trademark (CTM) application (27 countries after the UK exits)

– International or WIPO/Madrid System application (85 countries)



July 11 – 22, 2016



Trademarks – How to Acquire Rights

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• Select a mark and obtain trademark clearances in each relevant country

Note: Ignorance (no search) is not a defense and failure to follow counsel’s advice on

obstacles to adoption of mark can result in finding of bad faith (award of profits and attorneys

fees) against infringer. See International Star Class Yacht Racing Association v. Tommy Hilfiger,

U.S.A., Inc., 80 F.3d 749 (2d. Cir. 1996)

•Consider markets where product is made, distributed, sold or licensed for any of these

activities

•Consider short and long term business plans, proposed uses, for as broad a range of goods

and services as might reasonably be possible for the client

•Always possible to file new applications if business plans change



July 11 – 22, 2016



Dilution

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•Dilution is "the lessening of the capacity of a famous mark to identify and distinguish goods or

services, regardless of the presence or absence of (1) competition between the owner of the

famous mark and other parties, or (2) likelihood of confusion, mistake, or deception."

• Standard of Proof – Likelihood of Dilution

•What Qualifies as a “Famous” Mark?

– “widely recognized by the general consuming public of the United States”

• Safe Harbors – Any fair use other than a designation of source for a person’s own goods or

services; news reporting and commentary; any noncommercial use of mark

•Paris Convention, Article 6(bis) – Are well know marks not used or registered in the U.S.

protected in the U.S.? Courts are divided.



July 11 – 22, 2016



Benefits of U.S. Federal TM Registration

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Entitles holder to . . .

•Presumptively valid and national trademark right

•Deterrence

•Use of the ® symbol

•Access to federal court

•Ability to recover monetary damages plus attorney’s fees

•Basis for registration in other countries

•May be filed with U.S. Customs Service and used to block importation of infringing goods

•May be basis for challenging confusingly similar domain name registrations in federal court or

pursuant to UDRP



July 11 – 22, 2016



Trademarks – U.S. Application Filing

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•Choose basis for application: actual use; intent to use; application or registration in country of

origin; or extension of protection of International Registration (Madrid)

•Review specimen (sample) of mark as used in U.S. commerce, for future submission

• Identify date of first use, if available

•Consider who will own this and future trademarks for the business; revenue stream attributable

to use of trademark is taxable in domicile state of owner

•Consider descriptions of goods and/or services carefully for the near future and for the long

term; U.S. system requires particularity and accuracy



July 11 – 22, 2016



Trademarks – U.S. Application Filing (cont’d)

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•Approximate time to register: 12-15 months

• Term of registration: 10 years, renewable

•Use of ® or ™ is NOT compulsory, but is recommended

•Must submit statement of continuous use between the 5th and 6th years of registration, within 6

months of the end of the 10th year of registration, and then within 6 months of the end of

every subsequent 10 year period

•Non-use of mark for 3 years = evidentiary presumption of abandonment of rights



July 11 – 22, 2016



Trademarks – How to Enforce Rights

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• Trademark watching services

•Cease and desist letters

• Trademark opposition and cancellation proceedings at the Trademark Trial and Appeal

Board (TTAB)

•Civil litigation – case is often brought to argument before the court through preliminary

injunction motions, to remove competitor from market until a trial on the merits can occur

•Dawn Donut rule – even with a U.S. registration, actual or imminent use of mark in geographic

area of defendant’s activities is a precondition for relief



July 11 – 22, 2016



Factors for Determining Likelihood of Confusion

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• Likelihood of Confusion – DuPont Factors (partial list)

– Similarity of marks

– Similarity and nature of goods or services

– Similarity of trade channels

– Conditions under which and buyers to whom sales are made

– Fame of prior mark

– Actual confusion?

– Number and nature of similar marks used on similar goods

– Length of concurrent use

– In re E. I. DuPont De Nemours & Co., 476 F.2d 1357



July 11 – 22, 2016



TTAB Opposition/Cancellation Basics

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• TTAB has no statutory powers beyond granting or denying registration

• Federal Rules of Civil Procedure and Federal Rules of Evidence govern proceedings except as

overridden by Trademark Rules of Practice

• TTAB is an administrative tribunal - proceedings conducted in writing (w/exception of oral

arguments) w/ no live testimony

•Courts will at times stay proceedings pending the outcome of TTAB proceedings, but not the

norm

•How about subsequent litigation?

– Recent US Supreme Court case said courts may give preclusive effect to TTAB decisions on likelihood of

confusion



July 11 – 22, 2016



Why use TTAB? – advantages and limitations

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•Advantages:

– May be less costly than suit, but that may change because of recent US Supreme Court decision

– Defendant’s limited ability to introduce contextual factors can favor opposer/cancellation petitioner

•Disadvantages:

– Relief limited to denial or cancellation of registration – no injunctive relief or monetary awards

•Assessment driven by:

– Whether adverse party is using mark yet

– Breadth of client’s prior application, registration or common law rights

– Concern for “keeping register clean” of similar marks in client’s space



July 11 – 22, 2016



Opposition Grounds

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• Lanham Act § 13: “Any person who believes he would be damaged by registration of a mark including

registration of any mark that would be likely to cause dilution by blurring or dilution by tarnishment” may file an

opposition

• Potential grounds include:

– Likelihood of confusion

– False suggestion of association

– Mere descriptiveness

– Scandalous/immoral matter

– Deceptive

– Fraud

– Dilution

– Abandonment

– Genericism

– Functionality



July 11 – 22, 2016



Cancellation Grounds

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• Lanham Act § 14: "Any person who believes he is or will be damaged by, including as a result of likelihood of dilution by

blurring or dilution by tarnishment, the continued registration of a mark" may file a cancellation action on any of the potential

grounds listed before a registration becomes incontestable under Section 15. After a registration becomes incontestable, the

grounds are limited to those below denoted with an asterick.

• Potential grounds against a non-incontestable registration include:

– Likelihood of confusion

– False suggestion of association*

– Mere descriptiveness

– Scandalous/immoral matter

– Deceptive

– Fraud*

– Dilution

– Abandonment*

– Genericism*



July 11 – 22, 2016



Trademarks – Due Diligence Review

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•Obtain list of all active and failed registrations, applications worldwide

•Consider trademarks in use on products/services for which there is no registration/application

•Consider licensed rights (inbound and outbound)

•Consider all consent and co-existence agreements with third parties and inter-company

• Evaluate all steps taken to enforce rights against potential and actual infringers, including

cease and desist letters, oppositions and litigations, settled and active



July 11 – 22, 2016



Trademarks – Due Diligence Review (cont’d)

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•Confirm clean chain of title for all trademarks

•Confirm trademarks were cleared before adoption, obtain supporting legal opinions

• Effective acquisition or divestiture of trademark rights can only be achieved by transfer of

trademark and associated goodwill.



July 11 – 22, 2016



Domain Names

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•Proper management important

•Under Uniform Domain Name Dispute Resolution Policy (UDRP), first to register domain name

gets it unless

– Domain name is identical or confusingly similar to a trademark or service mark in which the complainant

has rights, and

– Domain name holder has no rights or legitimate interests in respect of the domain name, and

– Domain name was registered AND is being used in bad faith

•U.S. Anti-Cybersquatting Consumer Protection Act (ACPA) permits owner of a mark to bring suit

in federal court to recover domain name if it can show:

– Mark is valid

– Domain name was registered in bad faith in order to profit from the domain name

– Mark is identical or confusingly similar to the domain name



July 11 – 22, 2016



Domain Name Relief

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• Federal Statutes

– Trademark Infringement

• Section 32(1) of the Lanham Act (15 USC 1114)

– Federal Unfair Competition Law

• Section 43(a) of the Lanham Act (15 USC 1125(a))

– Federal Trademark Dilution Act of 1995 (15 USC 1125(c))

– 1999 Anticybersquatting Consumer Protection Act

• 15 USC 1125(d)

• Bad faith intent to profit

• In rem actions possible



July 11 – 22, 2016



Domain Name Relief

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• Administrative Action

– ICANN Uniform Domain Name Dispute Policy; WIPO

– Purpose is to remedy bad faith and abusive registration of domain names that violate trademark rights

• Applies to all top-level domain registrars for .com, .net, .org., .aero, .asia, .biz, .cat, .coop, .info, .jobs, .mobi,

.museum, .pro, .travel, and .tel

• Remedy: cancel or transfer domain name infringing on trademark

• See www.wipo.int/amc/en/domains/gtld/udrp/index.html

• Available forums

– National Arbitration Forum http://domains.adrforum.com/

– WIPO http://www.wipo.int/amc/en/domains/index.html

– Asian Domain Name Dispute Resolution Centre (ADNDRC) https://www.adndrc.org/index.html

– Czech Arbitration Center for Internet Disputes http://www.adr.eu/index.php

– Arab Center for Domain Name Dispute Resolution http://acdr.aipmas.org/default.aspx

http://www.wipo.int/amc/en/domains/gtld/udrp/index.html

http://domains.adrforum.com/

http://www.wipo.int/amc/en/domains/index.html

https://www.adndrc.org/index.html

http://www.adr.eu/index.php

http://acdr.aipmas.org/default.aspx



July 11 – 22, 2016



Copyright --- The Basics

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•What is eligible for copyright protection?

•Who is the copyright owner?

•What are the rights of a copyright owner?

•What additional rights does the author of a work of visual art have?

•What is copyright infringement?

•Who is potentially liable for copyright infringement?

•What are the penalties for copyright infringement?



July 11 – 22, 2016



COPYRIGHT --- What is a Copyright?

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•What is a Copyright?

– A form of legal protection provided to the creators of “original works of authorship” fixed in a tangible

medium of expression

– Governed by the federal Copyright Act in the United States

– Copyright protects “expression,” not “ideas” or “subject matter”

– Distinguish from a patent and a trademark

– “Bundle” of rights that can be exploited and transferred individually or in combination



July 11 – 22, 2016



COPYRIGHT --- Eligibility for Protection

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•What Is Eligible for Copyright Protection?

– “Original works of authorship” that are “fixed in any tangible medium of expression”

– Includes literary works, musical works, dramatic works, choreographic works, pictorial graphic and

sculptural works, motion pictures, other audiovisual works, sound recordings and architectural works

– Does not include: titles, names, short phrases, recipes (lists of ingredients), familiar symbols or designs, ideas,

works containing no original authorship, facts, or basic geometric shapes

Copyright Notice and Registration

- Post-1978 published works do not need a copyright notice to be protected

- Registration is not required for post-1978 works for copyright protection

- US copyright owners must obtain a copyright registration to sue for infringement



July 11 – 22, 2016



COPYRIGHT --- Ownership

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•Who Is the Copyright Owner?

– Copyright originally vests in the “author”

– In the case of a “work made for hire,” the employer is the author automatically as a matter of law

– Rights can be transferred in total or separately, by operation of law, by conveyance, by will or intestacy

– Need to distinguish between ownership of object and ownership of copyright (First Sale Doctrine)

– Transfer document or memorandum of transfer must be in writing and signed by owner of rights being

conveyed



July 11 – 22, 2016



COPYRIGHT --- Exclusive Rights of Copyright Owner

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•What Are the Rights of a Copyright Owner?

– Copyright owner has the exclusive right to:

• Reproduce the copyrighted work in copies;

• Prepare derivative works based on the original work;

• Distribute copies of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease or

lending;

• Perform the copyrighted work publicly;

• Display the copyrighted work publicly;

• In the case of a sound recording, to perform the copyrighted work publicly by means of a digital audio

transmission.



July 11 – 22, 2016



COPYRIGHT --- Additional Rights of Visual Arts Work Owner

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•What additional rights does the author of a work of visual art have?

– The right to claim authorship and to prevent intentional distortion or modification of work that would be

prejudicial to his/her reputation and to prevent destruction of work of recognized stature

– Generally covers only paintings, drawings, prints, sculptures and photos that exist in a single copy or in a

limited edition of 200 or fewer copies signed by the author

– Does not cover posters, maps, diagrams, models, books, motion pictures or other audiovisual works.

– Right lasts for the life of the author



July 11 – 22, 2016



COPYRIGHT --- Copyright Infringement

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•What Is Copyright Infringement?

– Any activity that violates one or more of the exclusive rights of the copyright owner;

– Examples

• Copying textual material;

• Taping or downloading music;

• Copying software for use other than on the machine for which it was purchased;

• Performing a play based on a movie or a script.

– Copyright infringement results in strict liability

– Lack of a copyright notice is no longer a defense

– Copyright infringement requires proof of access to the original copyrighted work before the act of

infringement occurred



July 11 – 22, 2016



COPYRIGHT --- Liability for Copyright Infringement

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•Who is Potentially Liable for Copyright Infringement?

– Primary infringer;

– Contributory infringer;

• A party who, with knowledge of the infringing activity, induces, causes, or materially contributes to the infringing

conduct of another; or who furnishes a copyrighted work to another, who in turn wrongfully copies from that work

– Vicarious infringer (Napster)

• Two elements:

– Right and ability to supervise the infringing conduct; and

– Obvious and direct financial interest in infringing act.

– Lack of knowledge is not a defense.



July 11 – 22, 2016



COPYRIGHT --- Penalties for Copyright Infringement

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•What are the Penalties for Copyright Infringement?

– Temporary and final injunctions

– Impoundment

– Actual damages plus the infringer’s profits

– Statutory damages if a registration was obtained before the infringment occurred or was obtained within

three months of the first publication.

• Non-willful infringement: $750- $30,000 per copyright work infringed

• Willful infringement: up to $150,000 per copyrighted work infringed

– Court costs and reasonable attorneys’ fees in the court's discretion

– Possible criminal penalties



July 11 – 22, 2016



COPYRIGHT --- Beyond the Basics

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•How long does a copyright last?

•What is the “public domain”?

•What copying/reproduction is permitted by law?



July 11 – 22, 2016



COPYRIGHT – Copyright Term

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•How Long Does a Copyright Last?

– It depends on several variables

• Is the work published or unpublished?

– If published

» Was it published with a proper copyright notice?

» If published between 1923 and 1963, was the copyright renewed?

» What is the date of publication, date of creation, and date of death?

– If not published

» Is the work anonymous or a corporate work?

» If the author is known, is the date of death known?

» What is the date of publication, date of creation, and date of death?



July 11 – 22, 2016



COPYRIGHT --- Copyright Term (cont.)

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•How Long Does a Copyright Last? Published Works

– For works published since 1978, 70 years after death of author, or if work of corporate authorship, the shorter

of 95 years from publication, or 120 years from creation

– For works published between 1923 and 1977, term is 95 years from date of publication assuming proper use

of © notice and renewal

– Anything published before 1923 is in the public domain



July 11 – 22, 2016



COPYRIGHT --- Copyright Term (cont.)

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•How Long Does a Copyright Last ? Unpublished Works

– For unpublished works where we know the author and the date of death, life of the author plus 70 years

– For unpublished anonymous and pseudonymous works, or works of corporate authorship, 120 years from

date of creation

– For unpublished works where the author’s date of death is not known, 120 years from the date of creation



July 11 – 22, 2016



COPYRIGHT --- Public Domain

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•What is (Where is) the “Public Domain”?

– It’s not a place!

• The “public domain” is the collective sum of all works not protected by copyright

– A work is in the “public domain” if it is no longer under copyright protection OR if it fails to meet the

requirements for copyright protection OR if copyright owner intentionally dedicates work to public domain

– Why do we care?

• Works in the “public domain” can be used freely without the permission of the author or former copyright owner



July 11 – 22, 2016



COPYRIGHT --- Permitted Copying

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•What Copying Is Permitted By Law?

– Section 108 – Permits “libraries” and “archives” to copy and distribute certain printed works, and to copy

and preserve certain visual works

– Section 110 (TEACH Act) --- Accredited non-profit institutions can transmit or display copyrighted works as

part of a course

– Section 107 --- FAIR USE

– Several other exceptions



July 11 – 22, 2016



COPYRIGHT --- Fair Use

46

•What Copying Is Permitted By Law? Section 107 Fair Use Exemption

– The “fair use” of a copyrighted work, for purposes such as criticism, comment, news reporting, teaching,

scholarship or research, is not an infringement

– Balances rights of copyright owner against First Amendment rights of public

– No definition of “fair use,” but law gives 4 non-exclusive factors to be considered

– Difficult to predict outcomes because of factual analysis required



July 11 – 22, 2016



COPYRIGHT --- Fair Use (cont.)

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– “Four Factors” To Be Considered:

• the purpose and character of the use, including whether the use is commercial or is for nonprofit educational

purposes;

• the nature of the copyrighted work;

• the amount and substantiality of the portion used in relation to the copyrighted work as a whole;

• the effect of the use upon the potential market for or value of the copyrighted work.



July 11 – 22, 2016




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• Examples – NOT Fair Use

•Copies of articles made systematically by scientists of periodicals circulated within the organization

•Harry Potter Lexology

• Examples – Fair Use

•Use of thumbnail images of Grateful Dead Posters in a biography on the band

•Use of John Lennon’s “Imagine” in documentary

•Home videotapes of television broadcasts is a fair use



July 11 – 22, 2016




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– Section 504(c)(2)

• Even if an infringement occurs, non-profit educational institution, library or archives can avoid statutory damages

when it believed and had reasonable grounds to believe that use of the copyrighted work was “fair use.”

• Requires implementation of procedures and policies to document reasonableness of fair use analysis

– Fair use is a potentially powerful tool, but in the end, there are no clear and predictable answers, so its

usefulness depends on staffing and risk profile of your organization



July 11 – 22, 2016



Digital Millennium Copyright Act

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•Circumvention of copyright protection technology unlawful

– Exceptions for reverse engineering to determine software compatibility and encryption research

• Sale of circumvention tools unlawful

•Removal of “copyright management information” unlawful

• Safe harbor for passive ISPs

• Exists independently

– Violation of DMCA is basis of liability independent of copyright law

•Criminal penalties possible

•Currently a debate on whether the DMCA needs to be revised now that it is over 10 years old


Questions?

51


Thank you!

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Overview of U.S. Trademark and Copyright · Thank you! 52

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