Principal or Supplemental?

A little known fact about the Trademark Registry: there are actually two registers for marks, the Principal and the Supplemental. As the names imply, one is more desirable than the other. But, how do you know which one to use? It's actually quite simple.

The Principal Register is where most marks are registered because most marks are capable of meeting the requirements to be on the Principal Register. One of those key requirments it that the mark be distinctive of the goods or services upon which it is affixed. Put another way, the mark must be inherently distinctive from the outset to be eligible to be on the Principal Register or it must have acquired enough distinctiveness to function as a mark.

What is distinctiveness? 'Distinctiveness' - also known as secondary meaning - is where the public has come to identify the term or design at issue with the products or services of the provider. For marks that are inherently distinctive, this happens automatically because the marks themselves are either suggestive, arbitrary or fanciful. These are known as the Abercrombie factors, named after the case in which they were established.

For marks that are merely descriptive - or simply they immediately convey an idea of the ingredients, qualities or characteristics of the goods or services - they cannot be inherently distinctive because they lack that ability to identify the source of the goods. For these marks, there is another route to registration: The Supplemental Register.

The Supplemental Register is designed for marks that are merely descriptive and that have not otherwise acquired distinctiveness. A registration on the Supplemental Register does not afford all of the benefits associated with the Principal Register, however, it does afford two very important ones: marks on the Supplemental Register can still use the ® symbol and the marks will show up when others search to determine if a mark is available. The biggest detriment to a Supplemental Registration is that you still have to prove that your mark is capable of functioning as a mark should you decide to sue someone else for infringement or other Lanham Act claims.

Once the mark has been used in commerce for at least five years, there is a presumption that it has acquired distinctiveness and thus can be registered on the Principal Register, but only under Section 2(f) of the Lanham Act. This will be noted on the registration so that others can be made aware that it is not inherently distinctive.

On balance, when choosing between a registration albeit on the Supplemental Register and no federal registration, the benefits still usually outweigh the drawbacks.

A Disturbing Trend

What do you do if the mark that you want to register at the Patent & Trademark Office is already registered by someone else? Conventional wisdom would say to try to buy the mark from them. If that doesn't work, most people give up and find a new mark. There is a disturbing trend, however, of the person who wanted to register the mark going filing to cancel the registration of the current owner.

We have seen several of these kinds of cancellations filed recently, all of which have argued that the registration should be cancelled for abandonment due to non-use or even fraud. Non-use is presumed if a mark has not been used in commerce for two consecutive years. In some cases, there are even allegations that the owner of the mark fraudulently represented in their Section 8 Affidavit of Continued Use to the PTO that they had been using the mark on the goods or services in the registration when in fact, according to the person trying to get the registration cancelled, they had not.

So far, we have not seen any decisions on these types of cases, but they represent a very disturbing trend of aggressive tactics to obtain a registration for a mark. As always, it is critically important for a mark owner to continue to use the mark so that there is no basis for someone else to seek a cancellation of the mark.

There is nothing to stop someone from filing a cancellation petition, but at a bare minimum you can fight it back with definite evidence of use, the ultimate cure.

www.heythatsmymark.com

It is a gross understatement to say that the Internet has revolutionized the way in which we live, from how we communicte to how we work. It has also made it a lot easier for people to infringe on other people's marks.

The first real wave of infringement that was recognized was when people would buy well-known marks as domain names and then sit on them waiting for the owner to pay them handsomely for the right to have their trademark in a domain name. This is known as 'cybersquatting'. A cousin is 'typosquatting' where the user relies on people's typos to find other versions of a trademark name and send them to a competitor's website.

Congress acted relatively quickly to make cybersquatting a civil offense by enacting the Anti-Cybersquatting Consumer Protection Act, which took effect in November 1999. Under the ACCPA, companies and individuals may bring a civil action against an alleged cybersquatter, but must prove, among other things, that the person who registered the domain name did so with a bad faith intent to profit from that registration.

Since its enactment, the ACCPA has been used numerous times by companies and individuals intent on reclaiming their intellectual property from squatters. But, are there other ways to protect your mark when it has been appropriated by a cybersquatter? As it turns out, yes.

ICANN - the Internet Corporation for Assigned Names and Numbers - has established uniform policies for domain name dispute resolution and certifies several organizations to handle domain name disputes of certin top level domains (TDLs), including WIPO. Other domains may have to be handled by the regional registrar. For example, domain names ending in .uk can only be resolved through Nominet UK, the registrar.

Domain name dispute resolution can offer a less expensive method of obtaining a good resolution, namely the transfer of the domain name to you. You may not be able to obtain damages or other relief like you would in litigation, but it can get the most valuable asset - the domain name - out of the hands of the infringers and back to you as quickly as possible.

image: Rosewithan (through Creative Commons, some rights reserved)
All text © 2008, Hardy, Carey, Chautin & Balkin, LLP. All Rights Reserved.

How To Lose Your Trademark In 4 Easy Steps

Creating a trademark is actually quite easy. Pick a name, a word, a number, a design - or a combination of those things, start using it on the sale of an item or a service, and voila you have your very own trademark. Registration - while extremely adviseable - does not mark the beginning of the life of the mark. A mark comes into being when it is used on the goods or services that are sold. It is literally that simple.

It is also easy to lose your trademark rights - even if you have gone through the expense and time of getting a registration, or litigating the mark. Like grass that gets overgrown without being cut, trademarks that languish without being used will fall into disrepair and inevitably, die.


So, here are the top 4 ways to lose your trademark:

1) Stop using it. It stands to reason that if use gives a mark its life, then failing to use the mark takes that life away. Unlike copyrights that are valid for a fixed period of time regardless of use, trademarks that are not used are considered abandoned - even if there is a valid registration. There is nothing to prevent a competitor who wants to get its hands on your mark from filing a cancellation of your registration based upon abandonment. It is then up to you to prove otherwise.

2) Don't File the Forms: this is more toward the registration of the mark, but a registration is critically important in allowing you to enforce your rights in your mark. So, you can easily kill your registration by failing to file the Section 8 use affidavit at the correct times. For marks that have just been registered, this is between the 5th and 6th year of registration and again at the first renewal. For those marks that have already been renewed, the Section 8 affidavit must be filed upon each successive renewal.

3) Let Others Use It Without Policing: Depending upon how wide-spread your use is, this may or may not be a big issue. For those who regularly license their marks to other for use on goods or services, it is critical to police those licensees to ensure that they are meeting quality control standards such that the product or service that bears your mark lives up to the reputation that you have built. Failure to do this will lead to a weakening of even the strongest marks and will open the door for competitors to come in and declare it abandoned.

4) Don't Go After Infringers: This is a tie-in with No. 3. Part of the obligation of a mark owner to police its mark is to go after those who infringe. Wilfull infringers - or those who pick a mark based upon your success - need to be shut down as soon as possible to prevent the taint of their (usually) inferior use on the strength and goodwill of your mark. This is why handbag manufacturers are so eager to go after counterfeiters.

The key to maintaining your mark - and your registration if you get one - is to use it and to pay attention to how others use it, going after those who infringe.

If you put all of those resources into building a brand, why throw it away?
image: brentdanley (through Creative Commons, some rights reserved)
All text © 2008, Hardy, Carey, Chautin & Balkin, LLP. All Rights Reserved.

Call Signs Can be Trademarked?

Radio and television stations generally do not have much in the way of trademark issues. The main intellectual property issues for these stations are copyright-related, be it the content that is aired, licenses for music, etc. But, trademark law does serve a useful purpose for radio and television stations, if in a limited capacity.

Have you ever considered registering your call sign as a trademark?

Not so long ago, this was a very thorny question, as the FCC exerted a great deal of control on this issue. It has since given up its role as authority over call signs - other than to register them for use on radio and television stations. The Patent & Trademark Office now has sole dominion over registering call signs as marks.

As with all potential registration applications, however, the key question to ask is: are you using the call sign as a mark? To 'use' a mark, means to use it on goods or services as a source identifier. Thus, 'Apple' for computers identifies to consumers that Apple Computers created the product that they are using. At its most basic level, the trademark is designed to allow consumers to make choices based upon reputation and goodwill of the business. This is why counterfeiting of goods is such a problem - it dilutes the goodwill of the brand by using it to sell shoddy merchandise.

For call signs, they can usually meet the requirement of being distinctive enough to function as a source indicator. The real question is whether they actually do function as a source indicator and that is usually dependent upon how the call sign is used.

Most frequently, the mark that is registered is the call sign plus some catch phrase that the station is using, so for example, KXYZ-FM "The Number One" can function as a mark as long as it is used to indicate that the radio services that are being provided come from KXYZ-FM. And, the call sign itself can also be registered assuming that it is used to denote the source of the services.

Registrations of marks are very advantageous - you can use the ® symbol, you have a registration with a presumption of validity when you go into court and, perhaps more importantly, your registration prevents others from registering the same or very similar marks. The costs are relatively low considering that you get a registration for 10 years (although an affidavit must be filed between the 5th and 6th year of registration and has a fee associated with it) and the benefits of that registration.

All in all, it is worthwhile to investigate this option very carefully.
image: Whiskeygonebad (through Creative Commons, some rights reserved)
All text © 2008, Hardy, Carey, Chautin & Balkin, LLP. All Rights Reserved.

Cease and Desist!

There is something about a letter on official lawyer letterhead with the ominous words "cease and desist" that can be very intimidating. "What did I do?", you wonder. "What are they going to do to me?"

A cease and desist letter can be very frightening, especially if it contains language about immediate litigation if you don't do exactly what is requested of you in the time period allotted. So what exactly is a cease and desist and what should you do if you receive one?

A cease and desist letter can take many forms from a fairly friendly reminder that you are using some intellectual property that doesn't belong to you to an outright threat of litigation if demands aren't met in a specific amount of time. Typically, a cease and desist letter falls somewhere in the middle and outlines who the person is who is writing, the interest of their client and what actions you have taken that has apparently infringed on their client's rights. The letter will also include some request for relief such as an outright halt of your allegedly infringing activities. It may also request information behind how you obtained the images (if it is copyright) or how long your alleged infringement has occurred.

The key to remember whenever receiving a cease and desist letter is to not panic. There are quite a few cease and desist letters that are sent that have absolutely no basis in fact (or in law). The best course is to first send the letter to your intellectual property counsel so they can determine what is being alleged. They should then ask for information from you to determine whether there is some factual or legal basis for the claim. Then, with your approval, they should prepare a formal response that addresses the allegations contained in the letter. Some times this could include agreeing to halt the infringing activity to avoid litigation.

Depending upon how thorough the response is and how unfounded the complaint was, you may not hear anything further from the other party. Of course, they may also find your response inadequate and proceed to file suit. Even if this happens, however, you have been given an idea of what they will argue and so it should not be as much of a shock if they actually file suit.

The ideal way to deal with a cease and desist letter is to review it, send it to counsel and make sure that counsel has enough information to make an accurate and thorough response. Good communication, even with someone who is threatening to sue you, is very important in heading off a lawsuit!
image: PearlsofJannah (through Creative Commons, some rights reserved)
All text © 2008, Hardy, Carey, Chautin & Balkin, LLP. All Rights Reserved.

An Idea Ripe for the Taking

image: Tiago Daniel
We all have ideas at one time or another. Some are good, some are bad and most are rather mediocre. And then, there are those few that are brilliant - at least we think so. But, what happens when your brilliant idea shows up as being thought of by someone else? Or worse, they're making money off of it and you're not? What do you do?

It's actually not a very simple question.

While the law is breathtaking in the breadth of areas that it covers, it's not always immediately obvious just where a perceived wrong fits in. Theft of an idea is one of those things that may be an exercise in fitting a square peg in a round hole. Perhaps surpisingly, none of the areas of intellectual property law that our firm practices - trademark or copyright - provides any amount of assistance.

The Copyright Law is very clear that ideas are not protected (and neither are procedures, processes, systems, methods of operation, concepts, principles, or discoveries.) Copyright protects only the expression of that idea. If ideas were covered, no one would be able to paint a picture of a bowl of fruit or write a play about relationships because there would be that one person who had already claimed the copyright in those ideas. The world would be a dull place indeed.

Should someone decide to paint a bowl of fruit, the copyright law will protect the expression of that painting: the manner in which the fruit is arranged, the lighting, the draping used, the style of the painting (abstract? modern? traditional?) and all of the other factors that go into making that particular painting unique. Indeed, the law itself only provides protection to original works of authorship. How can an idea to paint a bowl of fruit be original?

Trademark law also is no help. It is only interested in the mark that you use to sell your idea. It could care less what the item actually is. (Patent law, of course, would be mentioned as a possible contender. However, that is for a blog other than ours.)

Perhaps ideas can have no owners and instead be recognized by society as open to all for their use and expression. Now that is a novel idea.