protecting your brand here & abroad · 2020-05-05 · protecting your brand here & abroad:...

Protecting Your Brand Here & Abroad: What Breweries Need to Know About Trademark Registration

David S. Gooder, Commissioner for Trademarks, USPTOMegan Hoyt, Regional Outreach Officer, USPTOCraft Brewers Conference OnlineMay 5, 2020Images used in this presentation are for educational purposes only.

Let’s talk about trademarks

Trademarks vs Patents vs Copyrights

• Trademarks ®– A symbol of the goodwill of a business– An identifier of a single source– What can be a trademark?

• Patents– Utility - covers the guts– Design - covers non-functional design elements

• Copyrights ©– Covers expression of ideas– Does not cover short phrases

When it comes to beer…

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With more than 7,400 breweries in the US…

Consumers + beer brands depend on trademarks!

Two key issues: Protectability and Availability

• First, what is “ownable”– You cannot “own” a concept, theme, etc.– You cannot own what you cannot protect.

• So, must know what is a protectable trademark

• Then look at availability• This process is called “trademark clearance”

What is a protectable TM?

The Spectrum of Protectability

Prot

ecta

ble

Unprotectable

GenericBeer

BourbonWine

AspirinLong-neck

bottle

DescriptiveDechutes

Pappy Van Winkle

Pale Ale

SuggestiveGrouponNetflix

10 BarrelWitch’s Brew

ArbitraryBlue Moon

(for beer)

Dogfish Head(for beer)

Apple(for computers)

Amazon

CoinedKodakExxon

Availability: The Clearance Process

• Level 1 – Knock-out Search– Turnaround time: DIY or +/- 2-3 business days

• Level 2 - Full Clearance Analysis– Turnaround time: +/- 2-4 weeks

• Follow-up investigation• How do you assess what you find?

Test for Likelihood of Confusion(The most common factors)

1. Strength of the mark– Foreign language equivalents

2. Similarity of the marks3. Type of goods and the degree of care likely to be exercised by the purchaser4. Proximity of the goods 5. Evidence of actual confusion6. Marketing channels used7. Defendant’s intent in selecting the mark; and 8. Likelihood of expansion of the product lines

US + Foreign Trademark Protection:Strategy & Tactics• Step 1: Cleared our mark in the US• Step 2: Apply for US registration

Let’s talk about federal trademark registration in the United States

Why register?• Nationwide protection

• Constructive notice of right to use

• USPTO will refuse later-filed applications that are “confusingly similar”

• Ability to use ® symbol

• Ability to prevent importation of infringing goods

• Can be used as a basis for obtaining registration in a foreign country

• Statutory damages and attorneys fees available in federal litigation relating to infringement

The process

• Plan

• File

• Prosecute

• Maintain

Plan your filingDetermine before you file:• Type of mark

• Description of goods or services and respective classes

– ID manual

– Nice classification system

• Use-based under Section 1(a) or Intent-to-Use under Section 1(b)

– Specimens of use

– Bona fide intent to use

• Type of application

File

Types of applications• TEAS Plus

• TEAS Standard

FileWhat’s next?• Examining attorney assigned• Application examined in accordance

with TMEP• Office action• Amendments• Publication in Trademark Official

Gazette• Opposition period• Trademark Trial and Appeal Board

(TTAB)

File

What’s next?• Certificate of Registration

(Use-based application)• Notice of Allowance

(Intent-to-use application)• File Statement of Use or

Extension Request

Maintain• Check Trademark Status and

Document Retrieval (TSDR) website periodically

• Ensure that contact information is up to date

• “Courtesy” electronic reminders on day one of filing period for maintenance documents

• Failure to file can result in cancellation of registration

Now let’s talk about taking your trademark to other countries

Foreign Trademark Protection• Step 3: Strategize foreign markets

• Prioritize• Travel safely• DIY or with counsel

• Step 4: Foreign clearance• Step 5: Foreign filing• Step 6: Customs recordation

Foreign TM registration factors• First to use v. First to file• Timing:

– 4 months to 4 years• Process:

– Country by country or– Regional & “International” registrations

• DIY or w/Counsel

Travel Safely Abroad• Do not presume meaning is consistent• Avoid hijackers• Why does hijacking occur?

– Business culture– First to Use v. First to File laws– Popularity of the trademark

• Preventative cost far cheaper than ransom

Avoiding Hijackers• Four classic types of hijacking:

– Knowledge of mark gained in the United States or abroad– Knowledge of mark gained in that other country – Registration by potential distributors – Allowing foreign distributors to “help”

• How to avoid these problems

Let’s talk about foreign trademark registration

The Madrid System for international registration of trademarks

Topics covered

• Territoriality• Madrid System• US Trademark Owners seeking protection

outside the United States

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Effects of Territoriality

• Must apply for protection of trademarks jurisdiction by jurisdiction

• Subject to local laws—what is registrable in one country may not be in another (i.e. sound marks)

• Must enforce and police trademarks in each jurisdiction

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International Trademark?• Due to territoriality, there is no

“international trademark.”

• But, there is a way to streamline the process to file for trademark protection in a wide variety of countries—the Madrid System.

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The Madrid System• Two international treaties – the

Madrid Agreement (1891) and the Madrid Protocol (1989).

• Administered by the World Intellectual Property Organization in Geneva, Switzerland.

• U.S. has a member since November 2, 2003.

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The Madrid System• Comprised of 106 members covering

122 countries (as of January 15, 2020)• Allows trademark owners to seek

protection in several countries by filing one application through their national office.

• Applications can be submitted in one language (English, French, or Spanish) and the fees paid to one office in a single currency.

• Updates to registration information can be done through a central maintenance system.

U.S. Trademark Owners Using the Madrid System

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• USPTO serves as the ”office of origin” for applicants that meet one of three qualifications:

• Nationality• Domicile• Real or effective industrial or commercial

establishment

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USPTO Web-based Application for International Registration

Trademark Electronic Application System International (TEASi) –Online Filing

• Complete your application for International Registration

• Log in with MyUSPTO account

• Available at: http://teasi.uspto.gov/

WIPO

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• Check application statusand renew and update information for your International Registration

• Available at: http://www.wipo.int/madrid/en/

National registration of trademarks

National filing - Canada

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• File with the Canadian Intellectual Property Office (www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/home)

• Cost for online filing is $330 CAD for first class of goods or services, plus $100 CAD for each additional class (approximately $233 USD for first class and $71 USD for each additional class)

• Follows Nice classification system and Madrid Protocol. Only office that allows trademark applicants to use the Madrid e-filing system from day one (as of 2019).

National filing – United Kingdom

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• File with the Intellectual Property Office of the United Kingdom (https://www.gov.uk/how-to-register-a-trade-mark/apply)

• Registration will cover England, Scotland, Wales, and Northern Ireland.

• Cost for a standard online application is £170 for the first class, plus £50 for each additional class (approximately $210 USD for first class and $62 USD for each additional class)

• Follows Nice classification system and Madrid Protocol

Let’s talk about blocking the importation of infringing goods

Recordation with CBP• Recordation is the process of

recording your federal trademark registration with U.S. Customs and Border Protection to protect against infringing products from being imported.

• Recordation can be completed online at: https://iprr.cbp.gov/

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Recordation with CBP• Must have a valid trademark

registration from the USPTO• Cost is $190 per

international class of goods.• Need to provide information

regarding point of contact, licensees, countries of manufacture, etc.

• The recordation lasts for the life of the underlying registration.

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USPTO trademark resources for small businesses

Need help?USPTO online tutorials• Cover numerous topics

• Available on USPTO website at:www.uspto.gov/trademarks-getting-started/trademark-basics/basic-facts-about-trademarks-videos

Need help?Trademark Assistance Center• Provides general information

about the registration process• Responds to status inquiries• 8:30 a.m. –8 p.m. ET, Monday through FridayPhone: 571-272-9250 or 800-786-9199

Email:TrademarkAssistanceCenter@uspto.gov

Need help?

Madrid Protocol Page• Covers Basics of Madrid System and

FAQs

• Contains links to WIPO resources

• Available on USPTO website at:www.uspto.gov/trademark/laws-regulations/madrid-protocol

Thank you!

www.uspto.gov

TexasRegionalOffice@uspto.gov

(469) 295-9000

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