Author: Julia Brandsdorfer

Recent Trademark Cases

Posted on by Julia Brandsdorfer

Summer/Fall 1999

Can the name of a political organization infringe the trademark rights of an owner of a registered mark? 

The Court of Appeals for the Second Circuit recently held that a political organization’s organizing activities is an infringement of a registered trademark.  United We Stand America, Inc. v. United We Stand, America New York, Inc., 128 F.3d 86 (2nd Cir. 1997).  Generally speaking, trademark rights vest with the use of a mark in “commercial” activities.  See, Lanham Act §43(a).  Viewed in this way, one may think that infringement of a trademark is only through the use a mark in commercial activities.  However, infringement of a registered trademark has no such limitation under Federal law.  See Lanham Act §32(1)(a).

Can a business get a trademark registration on the name or image of a famous customer? 

As a general matter it is possible to get a trademark registration on a person’s image, picture, or name.  However, the Trademark Trial and Appeal Board (TTAB) recently held that a restaurant business could not acquire a federal service mark registration on the picture of Ernest Hemingway, a former patron of that establishment.  The TTAB concluded that the use of Hemingway’s picture, without the permission of his heirs, violated §2(a) of the Lanham Act since patrons of the restaurant are likely to assume a connection with the Hemingway estate.  In re Sloppy Joe’s International Inc., 43 U.S.P.Q.2d 1350 (TTAB 1997).

What should be the applicable statute of limitations for seeking redress in a trademark infringement case before a Laches defense against such action may succeed? 

Recently the Court of Appeals for the Eleventh Circuit joined the Second and Sixth Circuits in applying the applicable State’s statute of limitations to delays in seeking legal redress, commonly referred to as “Laches”.  Kason Industries, Inc. v. Component Hardware Group, Inc., 120 F.3d 1199 (11th Cir. 1997).  Accordingly, when examining whether or not to proceed against an alleged trademark infringing party, trademark owners should have legal counsel closely examine the issue of the time available to them before risking a defense of Laches.

Key Provisions of the Trademark Law Treaty

Posted on by Julia Brandsdorfer

Summer/Fall 1999

The Trademark Law Treaty (TLT) contains twenty-five articles supported by implementing  regulations. Among the treaty’s key provisions, as outlined by one of the leading legal treatises on trademark law, McCarthy on Trademarks and Unfair Competition, are the following:

  • Under U.S. law, trademarks and service marks are given equal standing, with the title trademark being given to a mark applied to goods and the title service mark being given to a mark applied to services.  However, many foreign countries treat trademarks and service marks differently.  The TLT now requires member nations to register service marks and equate service marks with trademarks for purposes of the treaty requirements.
  • U.S. law permits an applicant to file one application in multiple international classes of goods and services.  However, many foreign countries have required that an application only designate one international class.  The TLT now requires the use of multi-class applications that permit a single application to cover goods and services falling in multiple classes.
  • Since 1989, U.S. law permitted applicants to file intent-to-use applications, with documentation and proof of use required only prior to actual registration.  The TLT now permits member nations to use an intent-to-use application system with proof of use also required as a predicate to registration.  This will finally allow U.S. applicants in the process of investigating the utility and availability of a mark to begin the process of registering the mark in foreign countries as a precursor to actual introduction of the mark into the foreign market.
  • The TLT prohibits the requirement of certain technical formalities, such as a certificate from a register of commerce or proof of registration in another country, except where Convention date priority is desired.
  • All countries set out their independent requirements for filing an application to register a mark.  In the past such requirements may have differed between countries.  The TLT now defines the elements that can be required as a basis for receiving an application filing date.
  • Unlike the U.S., many countries have maintained a requirement that any signatures being submitted in support of registration of a mark be notarized or otherwise legalized in accordance with the laws of that nation.  Under the TLT, it will no longer be necessary in most instances to notarize or otherwise legalize signatures.
  • The TLT greatly simplifies the procedures for recording changes in name and ownership of trademark applications and registration.  A standard international form is provided in the treaty regulations and each nation must accept the request for change if made on an official form.  However, a nation may require that the request be made in the local official language.  A significant simplification is a provision permitting one form to serve to change ownership of multiple applications or registrations.  TLT, arts. 11(1)(h), 11(3).  If a change in ownership results from a corporate merger, a member nation may require a certified copy of an official document evidencing the merger.  A member nation may not require, as a condition of changing title to a registration, that an assignee prove that it received the business or relevant goodwill of the trademark.  TLT, art. 11(4)(iv).  However, this provision does not preclude a member nation, such as the United States, from enforcing a rule against assignments in gross.
  • Many countries have differing terms for renewal of trademarks, resulting in the need to closely monitor and record the current dates of renewal for each registration in each country and monitor any changes to renewal requirements in each country. The TLT now harmonizes the term of registration and of succeeding renewals at ten years.
  • The TLT defines the conditions that may be required for renewal of registration.  It specifically prohibits the requirement of a declaration or proof of actual use as a condition of renewal, as required by United States law.  TLT, art. 13(4)(iii).  However, a nation can apply use requirements during the registration period outside of the renewal procedure.  This is how the United States implemented this treaty obligation.  The Lanham Act section 9 was amended to conform to the requirements of the treaty.  However, the requirement of an affidavit of use was maintained by taking the obligation out of the renewal provisions of section 9 and inserting the obligation in section 8 as an independent and continual ten year obligation separate from the “renewal” process.

J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §29:34 (4th Ed., June 1999 release).

How the New Trademark Law Treaty Act of 1998 Will Effect Federal Trademark Registrations

Posted on by Julia Brandsdorfer

Summer/Fall 1999

The Trademark Law Treaty Implementation Act (TLTIA), Pub. L. 105–330, 112 Stat. 3064 (Oct. 30, 1998), amended several  sections of the Lanham Act to conform the application and renewal  procedure to the requirements of the Trademark Law Treaty, which was designed to  simplify and harmonize worldwide registration formalities.  Generally speaking, the amendments to the Lanham Act will have very little substantive impact, however their will be a number of format and procedural changes that should be noted.  For example, currently between the 5th and 6th year following registration of a mark, a Section 8 (Affidavit of Continued Use) must be filed.  If a Registrant fails to file the affidavit by the deadline, the registration is canceled.  However, with the implementation of TLTIA, Registrants are given a six month grace period with the payment of an additional fee.  Additionally, registrants will now have a six month deficiency period to correct many potential deficiencies in the Affidavit (although not all).  Of course, the deficiency period also requires payment of an additional fee as do most filings with the U.S. Patent & Trademark Office.

The TLTIA also amended Section 9 of the Lanham Act which formerly required a statement of continuing use of the trademark to remove this requirement and thereby conform to international trademark standards.  However, the deleted Section 9 requirement was added to Section 8 to now require not only the filing of a Renewal Application under Section 9 every ten years, but also a Section 8 Affidavit of Continuing Use every ten years, effectively circumventing the Trademark Law Treaty’s prohibition against requiring an affidavit of continuing use as a condition of renewal of registrations.

The treaty is mainly geared towards harmonizing many registration formalities, and eliminating a number of government requirements for trademark registration, thereby reducing the procedural burdens on trademark owners.  The treaty primarily focuses on procedural and administrative requirements.  However, some substantive provisions were also included.  Since many nations have differing procedures for registration and recordation of changes in trademark registration, it is commonly believed that harmonizing procedures between nations will reduce expenses and help facilitate world trade.  Although, this may be the intent, our experiences have shown that expenses associated with foreign trademark prosecution by U.S. entities continue to be extremely high and even with harmonization of governmental rules and regulations, these costs may continue to dissuade small to mid-size businesses from undertaking the trademark registration process in foreign countries.

The Internet and You

Posted on by Julia Brandsdorfer

What is a “Meta-Tag” and what does it mean to me?

Spring 1999

In the last two years, the emerging growth of the Internet has all but overshadowed every other avenue of business commerce.  It seems like everybody wants to jump on board whether they fully understand the implications or ramifications of doing so.  Now, the latest and greatest catchword on the Internet appears to be e-commerce.  For those of us who are new to the world of Internet, you are sure to learn all about such things as ISPs (internet service providers), domain names, search engines, linking and framing, Java®, HTML and meta-tags.  Each one of these items is significant in setting up an effective web site, and can also raise intellectual property infringement and liability issues for those who are not careful.

Briefly (and in layman’s terms), a meta-tag is an identifier embedded in a web page which can be accessed by systems searching the Internet for specific information (i.e. a search engine looking for information relevant to a requested search term).  You will not see a meta-tag when you download the web page, although an interrupted or otherwise incomplete download may reveal the meta- tags embedded on that web page.

As can be imagined, web page designers utilize these meta-tags as ways to increase the likelihood that a given web page will be retrieved during a search for information in some way related to the web page contents.  For example, if we requested information on Pepsi®, we would enter the term into a search engine and wait for the result.  The search engine would then take the search term and access its database of Internet sources and search for locations containing the term Pepsi®.  The search engine might also have an index to web sites based upon a search of the meta-tags contained in the site.  This often may entail the use of a web crawler program which seek out Internet sites for review and/or inclusion in a search output.  In this way a search request may retrieve sites that contain the term Pepsi® as part of their meta-tag list.  Accordingly, by entering the term Pepsi® as a meta-tag, a web page developer may increase the chances that someone searching the Internet for information on Pepsi® will be brought to that web page and thereby avail themselves of the products and/or services offered on the web page.

In this way, a web site is often compared to a storefront.  Following through with the storefront analogy, meta-tags may be compared to display signs placed in one’s store window with the hope that passers by will bother to enter the shop and purchase their goods.  Of course, the key distinction between a real sign in a store window and a meta-tag is that the searching computer is the one who is the target of the meta-tag — people may never even know that the meta- tag was present.  Accordingly, meta-tags may be utilized as an additional form of advertising on the Internet and, if used properly, may result in a substantial number of visitors to one’s web site.

Now one might ask how this would affect you?  If a business is generally attempting to utilize a web site to sell their products or services on the Internet, it would usually want to attract interested web surfers to their site rather than having them view their competitors site.  Conversely, you may benefit by having any web surfer who visits your competitors site also visit your site.  This is where meta-tags come in to play and how they can help or harm you and your business.  Since a meta-tag is an identifier that a search engine may use to bring surfers to your site, one might think why not use may competitor’s trademark(s) as one of my meta-tags so that each surfer who types in the competitor’s trademark(s) in the course of their search will be linked to my site?  As you may already imagine, if every store selling a non-Pepsi® product were permitted to advertise Pepsi® as a means of enticing Pepsi® drinkers into their store only to attempt to sell them a competing product, Pepsi® would not be pleased to say the least.  In fact, Pepsi®would likely sue for infringement of their trademark.  Likewise, web sites utilizing trademarks in their meta-tags have found themselves increasingly becoming the targets of a trademark infringement suits by the registered trademark holders of their meta-tags.

So where is the problem?  You are not advertising your product as their product and you are not attempting to confuse your products with that of a registered trademark holder.  However, as the use of the trademark brings web surfers to your site, trademark owners have argued, in some cases successfully, that use of a trademark in a meta-tag is infringement.  Trademark owners have been working to prevent the improper and non-licensed use of their trademarks in web sites.  For now, the courts hearing these cases have been consistent in ruling that improper and non-licensed use of trademarks in meta-tags may be considered an act of trademark infringement.  Accordingly, as a web site owner you need to be aware of how you use your web site meta-tags and other page identifiers to make sure you are not infringing on a trademark owner’s rights and, alternatively, trademark owners need to be aware that others might be infringing their trademark rights.

A final note: the law as it relates to the Internet is extremely fluid.  As the Internet is a new frontier with as of yet unknown possibilities, the current view on meta-tags as well as other areas of law as applied to the Internet may well change more than once.  Therefore, we will endeavor to keep you informed of variations to this fast changing area of law as we become aware of them.

Steps to Establishing an Identity in the Marketplace

Posted on by Julia Brandsdorfer

Winter 1999

Every day we are fortunate that we are able to witness the birth of new companies with new products and services entering our global marketplace. Whether you fit into one of these categories, or not, every business markets its products and services which in turn establishes the business’s reputation and builds goodwill for that business. Protecting a name, logo and/or image associated with a business’s products and/or services is critical if a business wants to protect and enhance the goodwill and value of the business. The following are some basic steps we recommend for properly establishing, maintaining, and/or attempting to maximize the value of one’s products and/or service through the use of trademarks and/or service marks. Please be advised that there are many pitfalls that you may encounter during the process of acquiring a trademark registration. There are exceptions to practically every rule and legal questions which may expand or contract the rights you acquire in your mark. You should consult a licensed attorney prior to undertaking the trademark registration process.

 

  1. If possible, prior to selecting a name or logo for a product or service, it is recommended that you have a trademark search conducted to determine the availability of the mark you are considering. The search should include a review of all similar or related federal, state and common law marks to increase the likelihood that you can acquire exclusive rights to the mark. If of course you already are using the mark, searching available records is still recommended so that you will be fully informed of possible competing businesses as well as potential obstacles to acquiring a registration or fully developing the goodwill associated with the mark.
  2. Following the search, it is recommended that you have the results of the search reviewed by legal counsel experienced in trademark law to assist you with evaluating the results and providing counseling on how to proceed in view of the search results. Based upon the results of this review and the business strategy you intend on employing, it generally is advisable that you have a trademark application prepared and filed with the U.S. Patent and Trademark Office, and/or state and foreign governments.
  3. Prior to receiving a federal trademark registration, anytime a mark is used in commerce to represent your goods and/or services, you should place a “™” adjacent to the mark. This symbol notifies the public of your intention to obtain and/or enforce your rights in the mark for the applicable goods and/or services. At such time as you receive a federal trademark registration from the U.S. Patent and Trademark Office, you replace the “™” symbol with a ® so as to place all members of the public on notice of your federal trademark registration.(1)
  4. Once you have received your federal trademark registration, it is important to maintain your rights in the mark as long as you continue to use the mark in its registered form. Such steps may include timely filing all affidavits and renewal requests with the U.S. Patent and Trademark Office, vigilant enforcement of your trademark against infringing parties, and monitoring the use of your registered mark by any parties licensed to use it. For a nominal fee, the law firm representing you in the trademark process will often provide the docketing of deadlines for trademark renewals or filing of required papers, however, this service may not be required if you are relatively certain that you will not overlook these deadlines as doing so may result in the cancellation of your registration.
  5. We further distinguish the policing of your mark and how your mark is used as such action may likely lead to litigation or other legal proceedings and warrant further discussion. Preventing others from using your mark or “confusingly similar” marks on the same or similar products and/or services is critical if you are to retain the rights provided under trademark law. This includes any rights you may have under federal, state and common law. Although at this point you may have a federal trademark registration, the value of your mark and your goodwill may be subject to some form of “dilution” if “confusingly similar” marks are permitted to co-exist, whether by usage or registration. Furthermore, intentional neglect in enforcing your rights may be considered a waiver of your rights under certain circumstances. Therefor, although lack of enforcement may not jeopardize your right to use the mark, your ability to prevent others from using the mark will be greatly diminished as will the goodwill you may have generated in the mark. Accordingly, it is recommended that you monitor all marks being filed at the U.S. Patent and Trademark Office, as well as all similar marks being used on competing products and/or services and advise your legal counsel at such time as you discover a potentially infringing use of your mark by others. Often your legal counsel will be able to provide the monitoring services for you at minimal cost.

 

Summary of Steps

  • Conduct Trademark Search(es) of Mark
  • File Trademark Application(s)
  • Provide Notice to the Public of Your Rights in the Mark
  • Maintain Your Registration(s) Through Use and Renewal
  • Police the Use of Your Mark

 

Footnotes

  1. As a U.S. registration is only valid in the United States of America, businesses providing goods and services in foreign countries often continue to use “™” when displaying their trademarks in those countries since until such time as they have acquired a registration in those countries they may be falsely advertising their mark as a registered mark in those countries. As the extent of liability in such a case is uncertain, you should consult your attorney to determine the extent of your exposure.
Lieberman & Brandsdorfer, LLC