branding and trademarks: the u.s. legal framework (short)

Branding and Trademarks: The U.S. Legal Framework

Frederick A. Spaeth JD, MBA December 15, 2016

Presented to:

STATE ADMINISTRATION FOR INDUSTRY & COMMERCE

of the PEOPLE’S REPUBLIC OF CHINA

Forbes Most Valuable Brands 2016

• Top Industries: Technology (17 brands), Financial services (13), Autos (12), Consumer package goods (10), Luxury (8), Retail (8).

• Top 5 by Brand Value: Apple, Google, Microsoft, Coca-Cola, Facebook

• Top 5 by Brand Value Growth: Facebook, Google, Microsoft, Apple, Coca-cola

• Top 100 Brand Industries include: Aerospace, Alcohol, Apparel, Automotive, Beverages, Business Services, Consumer Packaged Goods, Diversified, Financial Services, Heavy Equipment, Leisure, Luxury, Media, Restaurants, Retail, Technology, Telecom, Tobacco, Transportation

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A Trademark Represents a Brand

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Value / Price

Premium

Identity and Image

Customer Expectations

BusinessReputation

TM

Brand Loyalty

Key Functions of a Trademark

A trademark carries the brand message, which helps bring value to a company by generating :

- Initial Customer Interest, and- Repeat business

Businesses protect their trademarks in order to preserve the value of the brand to the company.

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U.S. Trademark LawBasic Principles

The basic purpose of U.S. trademark law is to protect

- the public's interest in protection against deceit

as to the sources of its purchases, [and]

- the business's right to enjoy business earned

through investment in the good will and

reputation attached to a trade name

from “Likelihood of Confusion”

See Christian Louboutin v. Yves Saint Laurent America, 696 F. 3d 206 (2nd Cir. 2012).

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Basic U.S. Trademark Rights (“Common Law”)

In case of Likelihood of Confusion, the Senior (first) user has priority to seek:- Order to stop use of a mark by a

“junior (later) user”- “Damages” (compensation for

losses, damage to reputation, etc.)

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Protection and Enforcement:Two Legal Systems

Two Kinds of Legal Rights

• Federal

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• Registration(U.S. PTO), or

• “Common Law”(Unregistered)

• State-by-State• Registration

(Secretary of State), or• “Common Law”

Key Steps for a New Mark

• Select the Mark

• Clear the Mark

• Register

• Protect

• Use Properly

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Selecting A Mark

Will a simple translation of an existing mark from China work well in the U.S.A.?

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Selecting A MarkPossible issues with “imported marks”

- Some marks are not protectable under U.S. law(surnames, descriptive, mis-descriptive, etc.)- Possible negative or distracting connotations

from direct translations.- Possible differences in values held by target

customers (e.g., desire to display purchase vs. desire for self-expression; reliance on business reputation vs. appreciation for innovation).

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Selecting A New Mark

Choose a Strong Mark

Strength Protectability

• Strong marks are immediately protectable.

• Strong marks are more widely protectable.



What makes a mark “Strong” and Protectable?

… Distinctiveness !– In relation to the product or service, or to your

intended customers;

– In relation to marks in use by others (especially for competitive or complementary goods and services)



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A Strong, Distinctive Mark may be:

• Fanciful (a made-up word), e.g.,

SPOTIFY

• Arbitrary (no inherent connection to the product, service

or customer)

APPLE computers BLUE DIAMOND nuts

• Suggestive (but not Descriptive)

GREYHOUND KLEENEX ENERGIZER

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What does a ‘weak’ mark look like?

A mark that describes the goods or services (by naming ingredients, characteristics, customers or

type of provider)

is weak, and not as protectable as a strong mark.

• MODERN CAMPER for sales of camping equipment

• CARBON ELIMINATOR for fuel additive to remove carbon deposits

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A STRONG mark also stands out fromthe other marks already in use.

• Don’t choose a mark that gets lost among thecompetition

There are more than 6500+ U.S. registered marks that include “SUPER”; more than 5000 that say “GOLD”

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Clearing a New Mark

Best practice = “clear” a mark before using it, i.e.,

Search for similar marks already registered or in use, to avoid Likelihood of Confusion, and so …

• Avoid being a target of legal action by a Senior user.

• Enhance chances for registration.


A Business Should Register Its Mark

Many Benefits of Federal Registration:

• Strengthen your rights and help others avoid infringing your mark

• You can say “ACME is a registered trademark”

ACME tablet computer

• Inhibit use and registration of similar marks by others

• Nation-wide notice of your ownership of the mark

• And more...


Federal Registrations are limited to:

• Goods and/or services actually sold in U.S. commerce.


Application for Federal Registration

Can be based on:

• A valid registration in China, or

• Actual use in U.S. commerce, or

• A bona fide intention to use the mark in U.S. commerce

• Official filing fee $325 per class


Federal Registration Process

- Initial examination of application: refusal of marks that would cause likelihood of confusion; “merely descriptive” marks, surnames, etc.

-Publication for Opposition

-Post-registration Renewals

-Post-registration Cancellation© Copyright 2016 20

Protect A Mark

Protecting a mark against Likelihood of Confusion

= taking action against infringers

• Cease & Desist; Oppositions; Litigation

• U.S. Customs


Using the Mark

A word mark should stand out:

• Visually - size

• Stylistically – font, color

• With “TM” or “SM” or when registered.

Right: “Get a STAND OUT™ server for your

network”

Wrong: “Get a Standout for your network”


THANK YOU!

Frederick Spaeth, Esq.Dilworth IP, LLC

2 Corporate Drive Suite 2206Trumbull, CT 06611

[email protected] https://www.linkedin.com/in/fspaeth

© 2016 This work is licensed under the Creative Commons Attribution-NonCommercial-

NoDerivatives 4.0 International License. To view a copy of this license, visit http://creativecommons.org/licenses/by-nc-nd/4.0/
