© 2016 Venable LLP
PROTECTING BRANDS & INTELLECTUAL PROPERTY (IP) IN THE PERSONAL CARE INDUSTRY
Justin Pierce
May 5, 2016
© 2016 Venable LLP
OUTLINE:
• IP Basics and the Importance of Multi-layering IP Rights
• Examples of Brand IP Enforcement in the Personal Care
Industry
• Best Practices
Protecting Brand IP in the Personal Care Industry
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IP Basics
• Patents, Trademarks & Copyrights
– People often confuse these rights. While there are
some similarities, these IP rights are different and
serve different purposes.
– These rights can coexist and do not have to be
mutually exclusive. For example, in any one
product, more than one form of IP protection may
apply, as long as it meets the requirements of the
laws that govern that form of protection.
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• Patent protection is provided for inventions
and industrial designs (and even plants).
• A patent gives the inventor the exclusive right
to exclude others from making, using,
offering for sale or selling the invention.
• Different types of patents have different
terms:
– Utility patents have a 20-year term.
– Design patents have a 14-year term.
Patents
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• Trademark protection is afforded to words or
designs that are used to distinguish the
source of the goods or services from the
goods or services of others.
• A trademark gives the owner the right to
prevent others from using a confusing, similar
mark.
• Trademark rights may continue indefinitely.
Trademarks
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• Copyright protection is afforded to authors of “original works of authorship,” including literary, dramatic, musical, artistic and certain other intellectual works.
• A copyright gives the owner the exclusive right to do certain things, e.g., copy the work, adapt the work and distribute copies of the work.
• Copyright terms (for works created on or after January 1, 1978).
– Individual: life + 70 years
– Work made for hire: 95 years from publication or 120 years from creation
Copyright
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Trade Secrets
• Trade secrets consist of information (formula, pattern, compilation, program, device, method, technique or process) that derives independent economic value from being a secret, and is kept secret through reasonable efforts.
• Term: protection continues as long as it stays secret (indefinite).
• Unlike other IP, historically covered by state law rather than federal.
• But Congress just passed the Defend Trade Secrets Act of 2016 (DTSA) on April 27, 2016, providing for a new federal cause of action for trade secrets theft. This expands trade secret protection to address a growing concern of companies operating across state and national borders with highly valuable trade secrets.
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• An ornamental design may be protected by
copyright as a work of art and also may be the
subject of a design patent.
– Example: ornate packaging design
• Where a copyrighted artistic representation
identifies a product or service, it also may be the
subject of a trademark.
– Example: an artful logo
Multi-layering IP Protection
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• Depending on the features of the “intellectual property” in question, it may be covered by:
– Patent protection
• Design 14 years, or
• Utility 20 years.
– Copyright protection:
• Life + 70, or
• Works made for hire, 95 or 120.
– Trademark protection
• Indefinite
Multi-layering IP Protection
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• Patents, trademarks, copyright:
– Different types of protection
– Different terms of protection
• Thus, the “exclusive” use of the creation, design, or invention may be extended if:
– It covers more than one type of IP.
• Exception: trade secret v. patent protection
– Mutually exclusive
Multi-layering IP Protection
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Brand IP Enforcement Examples (Trademark)
Moroccanoil, Inc. v. Marc Anthony Cosmetics, Inc. (2013)
Hair care product distributor (Moroccanoil) brought an action against
competitor (Marc Anthony Cosmetics) alleging trademark infringement and
trade dress infringement for use of the term “Moroccanoil.” Court determined
that the term “Moroccanoil” was not generic and denied defendant’s motion
for summary judgment, and also found plaintiff's trade dress to be inherently
distinctive.
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Plum Island Soap Co., LLC v. Danielle and Co., Inc., (2011)
Plaintiff (Plum Island) manufactures soaps and scents marketed
towards men; it advertises a product called “The Man Can,” and
sued (seeking a preliminary injunction against) competitor
(Danielle and Co.) alleging trademark infringement of the term
“The Man Can.” Defendant manufactures soaps and shampoos for
men called “The Manly Man Can,” “The Classic Man Can,” and “The
Modern Man Can.”
Court granted injunction as the design of the parties’ products are
remarkably similar; both companies sell similar products marketed
towards men; there was evidence of actual consumer confusion;
and plaintiff had been using the mark for 5 years before defendant
began its line of products.
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Grayson O Co. v. Agadir Int'l LLC, (2015)
Hair care product manufacturer (Grayson O) brought action against defendant competitor (Agadir) alleging trademark infringement based on Agadir’s inclusion of the temperature “450°” as part of the name of it's product line. Grayson O owns a trademark registration for the mark “F 450” for use in connection with hair care products.
Court granted defendant Agadir’s motion for summary judgment because it found insufficient evidence to establish that defendant was trying to capitalize on plaintiff's mark or that defendant otherwise had an intent to mislead or cause consumer confusion, especially given the distinction in the packaging and the common use of “450” in marketing products designed to protect hair from high temperatures. The court also noted that there was little evidence of actual confusion.
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Brand IP Enforcement Examples
(Design) Anderson v. Kimberly-Clark Corp., (2014)
Plaintiff (pro se individual) is the owner of a design patent for an absorbent disposable undergarment. Plaintiff brought infringement action against Kimberly-Clark for its “Depends” and “Goodnite” brand absorbent undergarments.
Court ruled in favor of Kimberly-Clark and found that the accused products did not infringe design patent. The court compared the asserted design patent to the photographs of the accused products, submitted by defendant, and concluded that “plain differences” exist between the accused products and the patented design.
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Brand IP Enforcement Examples
(Trade Secret)
Givaudan Fragrances Corp. v. Krivda, (2016)
Givaudan Fragrances creates and produces
fragrance compounds for fine fragrances and
perfumes. Givaudan sued a former employee and
his new employer, alleging trade secret
misappropriation, specifically claiming the former
employee stole more than 600 fragrance formulas
before leaving Givuadan’s employment.
The Court ruled in favor of defendant Krivda finding
that plaintiff Givaudan failed to prove that
defendant violated his employment contract or that
any of Givaudan’s formulas were misappropriated.
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Best Practices in Protecting Brand IP
• Systematically secure all IP rights and, where possible, record these rights
with Customs in all jurisdictions where your company manufactures,
distributes, and/or has plans to expand.
• Invest in and use multi-layered IP protection for your key products and/or
services.
• Take trade secrets seriously. Maintain the right protocols for securing trade
secrets; and when you take on new employees, ensure that they are not
using others’ trade secrets.
• Constantly look to assess and improve your brand protection measures in
order to keep up with sophisticated competitors, counterfeiters, infringers
and pirates; this includes keeping pace with current in trends e-commerce,
technology and media (e.g. social media, emergence of dark web, 3D
printing, new online marketplaces).
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