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Introduction toIntellectual Property Law

CHAPTER 1

CHAPTER SUMMARY

The term intellectual property is generally thought of as comprising four overlapping fields oflaw: trademarks (protecting names, logos, symbols, and other devices indicating the quality andsource of products and services); copyrights (protecting original works of authorship); patents(grants by the federal government allowing their owners to exclude others from making, using, orselling the owner’s invention); and trade secrets (any commercial information that, if known by acompetitor, would afford the competitor an advantage in the marketplace). Patents must be issuedby the federal government, while rights in trademarks are created by use of marks and rights incopyright exist from the time a work is created in fixed form. Nevertheless, registration of trade-marks and copyrights offers certain advantages and benefits. Trade secrets are governed by variousstate laws, and registration is not required for existence and ownership of a trade secret.Trademarks and trade secrets can endure perpetually as long as they are protected, while copy-rights and patents will fall into the public domain and be available for use by anyone after theirterms expire.

As our world becomes increasingly reliant on technological advances, greater demands andchallenges are made on IP practitioners. The field is an exciting and challenging one and offers sig-nificant opportunities for hands-on involvement by IP professionals.

TRIVIA

• The value of Microsoft Corporation’s trademarks is estimated to be $65.1 billion.• For businesses in the food or luxury goods sector, the value of their brands and related

intellectual property is estimated at between seventy percent and ninety percent of thetotal value of their businesses.

• The Department of Commerce has stated that the combined copyright and trademarkindustries represent the second fastest growing sector of the U.S. economy.

• The Business Software Alliance concluded that software piracy cost the United States109,000 jobs and $91 million in lost tax revenue in 1998.

C H A P T E R 1

INTERNET RESOURCESFederal statutes governing

intellectual property: http://www.ll.georgetown.edu and http://www.findlaw.com

Trademark and patent information,forms, and fees: http://www.uspto.gov

Copyright information, forms, and fees: http://www.loc.gov/copyright

International treaties and agreements: http://www.wipo.org

General information on intellectual property topics: http://www.findlaw.com and

http://www.megalaw.com

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Foundations ofTrademark Law

CHAPTER 2

TRIVIA

• The oldest U.S. trademark registration still in existence is SAMSON (with a design of aman and a lion) registered in 1884 for use on cords, line, and rope.

• The first registration of a shape and design of a container was in 1958 for Haig & Haig’s“pinch” scotch whiskey bottle.

• Some of the famous sound marks registered include Tarzan’s yell, the “Ho, Ho, Ho” ofthe Jolly Green Giant, and the sound of a duck quacking “AFLAC.”

CHAPTER SUMMARY

Trademarks play a valuable role in our economy. They serve to distinguish one merchant’sgoods or services from those of another and provide assurances of quality and consistency to con-sumers. There are four different types of marks: trademarks (used for goods); service marks (usedfor services); certification marks (used to certify a quality of a good or service); and collective marks(used to show membership in an association). Rights to marks are acquired through use. There is noneed to file an application for federal registration of a mark with the PTO to acquire or maintainrights to a mark, although registration does offer significant advantages to a trademark owner.

Not all words, letters, and symbols are protectable. Generic words cannot be trademarked, anddescriptive marks can be trademarked only upon proof of secondary meaning. Suggestive, arbitrary,and coined marks are all registrable without proof of secondary meaning. Certain types of marksare excluded from federal protection, such as scandalous marks, deceptive marks, and geographi-cally deceptively misdescriptive marks.

C H A P T E R 2

INTERNET RESOURCESFederal statutes governing trademarks

(15 U.S.C. § 1051 et seq.) http://www.ll.georgetown.edu and http://www.findlaw.com

PTO trademark information: http://www.uspto.gov (general information,trademark searching, and access to Trade-mark Manual of Examining Practice forexcellent information on types of marks andwhat may be protected) (access http://www.uspto.gov/web/offices/tac/tmep/index.html)

General information on trademark topics: http://www.findlaw.com and http://www.megalaw.com

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Trademark Selectionand Searching

CHAPTER 3

TRIVIA

• Among the marks registered by celebrities for entertainment services are BON JOVI®

and DIXIE CHICKS.®

• The PTO has registered more than 2 million trademarks since the first trademark lawwas passed in 1870. Approximately 1 million of these are still in effect.

• In 2000, the mark CARNATION BRAND (& DESIGN)® used for condensed milk cele-brated its one hundredth year of trademark registration.

• Elvis Presley Enterprises, Inc. has more than 100 pending applications and registra-tions for marks related to Elvis Presley, including registrations for JAILHOUSEROCK®, BLUE SUEDE SHOES®, and HEARTBREAK HOTEL® for a variety of goods(including cigarette lighters and shot glasses).

CHAPTER SUMMARY

Once a client has selected a mark, the mark should be subjected to a search to ensure that noother party has secured rights to the mark or to a confusingly similar mark. Failure to conduct asearch or failure to conduct an adequate search may be characterized by a court as carelessness andweigh in favor of a party who alleges infringement. Reviewing search results and reporting resultsto clients is difficult and time-consuming. Often follow-up investigation is needed to determinewhether potentially conflicting marks remain in use or are in use with related goods or services.Conducting a search, however, will result in a snapshot of the marketplace, providing informationabout competitors, conflicting marks, and how the PTO has handled applications for similar marks.

If the search “clears” the mark, an application should be filed promptly with the PTO for regis-tration of the mark if the mark has been used in commerce or the client has a bona fide intent to usethe mark in commerce.

C H A P T E R 3

INTERNET RESOURCESPTO TESS and TARR databases: http://www.uspto.gov (select “Trademarks” and

then select either “Search trademarks” (TESS)or “Check status” (TARR))

Trademark search tips: http://lexis.nexis.com/associates/searchtips/ (tips on trademark searching offered byLEXIS)

Searching trademarks on the Internet: http://www.ubc.ca/scieng/patents/tmnet_e1.htm

DIALOG tutorial: http://training.dialog.com/onlinecourses/trademarks

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The TrademarkRegistration Process

CHAPTER 4

CHAPTER SUMMARY

After searching and clearance of a mark for availability, an application should be filed with thePTO for registration of the mark. If the mark has actually been used in interstate commerce, theapplication should be accompanied by a specimen showing how the mark is actually used.

The application will be carefully reviewed by an examining attorney to determine if it meets thestatutory requirements and whether any marks similar to the proposed mark have been registeredor applied for in the same or related industries. The examining attorney’s objections are enumer-ated in an office action. An applicant has six months to respond to an office action. The process con-tinues until either the application is finally refused or it is allowed for publication in the OfficialGazette, a weekly government publication. Individuals who believe they may be injured by the pro-posed registration have a statutory period within which to oppose registration of the mark. If noopposition is filed, the mark will proceed to registration.

If the applicant has not yet engaged in actual use of the mark, the procedure is essentially thesame. The application will be reviewed by an examining attorney, who will approve it, publish it foropposition in the Official Gazette, and issue a notice of allowance. The applicant will then have sixmonths to begin use of the mark in commerce and file a statement of use verifying such use with anactual specimen attached. Extensions of time may be granted. After review of the statement of useand specimen, the mark will be registered. Registration is a complex and lengthy process even ifthere are only minimal problems.

TRIVIA

• The public initiates more than 1 million queries per month through TESS (the onlinetrademark search system).

• Mattel Inc. applied for 5,501 trademarks in 1999.• Elvis Presley Enterprises, Inc. (the successor to the estate of Elvis Presley) owns more

than 100 trademark applications and registrations, including registrations for HEART-BREAK HOTEL for toys and BLUE SUEDE SHOES for key chains and shot glasses.

• In early 2001, the Federal Circuit held that a hair care company’s mark TREVIVE waslikely to cause confusion with Alberto-Culver’s trademark TRESEMME® used for haircare products for more than forty years.

C H A P T E R 4

INTERNET RESOURCESPTO web site: http://www.uspto.gov

Trademark Manual of Examining Practice (TMEP): http://www.uspto.gov/web/offices/tac/tmep/index.html

Acceptable Identification of Goods and Services Manual: http://www.uspto.gov (access the PTO web site and

select Trademarks. Under Manuals and Publi-cations, select this manual for thousands of exam-ples of goods and services and their classifications,from “abacuses” to “zwieback”)

TEAS information and forms: http://www.uspto.gov/teas/index.html

Official Gazette: http://www.uspto.gov (access PTO web site andselect Trademarks. Under Manuals and Publi-cations, select Official Gazette for online access tolast five issues of the Official Gazette)

General trademark information: http://www.ll.georgetown.edu;http://www.findlaw.com; and http://www.ipmall.fplc.edu (intellectual propertyresource web site offered by Pierce Law School)

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PostregistrationProcedures, Trademark

Maintenance, and Transferof Rights to Marks

CHAPTER 5

TRIVIA

• Words that were once valid trademarks but have become genericized include cornflakes, dry ice, kerosene, linoleum, nylon, shredded wheat, and trampoline.

• Someone registers a trademark every five minutes.• In 1772 George Washington asked to use his name as a trademark for flour.

CHAPTER SUMMARY

Merely obtaining a federal trademark registration does not guarantee an owner unlimited andperpetual rights to a mark. Because rights to a mark stem from use (rather than mere registration),the Lanham Act imposes certain requirements on registrants to ensure that only active marksremain on the PTO rolls.

Thus, a registration will be canceled unless, between the fifth and sixth year after registration,and in the year before the end of each ten-year period after registration, the owner files a section 8affidavit with the PTO alleging its continued use of the mark and submitting a specimen showingthe mark as presently used.

If the mark is registered on the Principal Register, has been in continuous use for five years,and has not been the subject of any adverse action, the owner may file a section 15 affidavit andthereby obtain incontestability status for the mark, severely limiting the grounds upon whichattacks on the mark may be made.

At the end of the registration period, and every ten years thereafter, an application for renewalmust be filed to maintain the registration in force.

In addition to losing rights to federal registration, a trademark owner can lose rights to themark if it becomes generic or if it is abandoned with intent not to resume use. Nonuse for threeyears creates a presumption of abandonment.

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To ensure rights to marks are maintained, many trademark owners develop compliance policiesthat set forth guidelines for proper use and display of the mark. Additionally, many owners monitoruse of marks in the marketplace to detect potentially infringing marks.

Finally, rights to marks can be lost by acts that cause the mark to lose significance, such as byan assignment of a mark that does not include its goodwill or a license of a mark without qualitycontrol provisions to ensure that a licensee’s use will be consistent with the standards of quality thepublic has come to expect of a mark. Trademarks can be used as collateral to secure a party’s obli-gation to perform a promise. In the event of a party’s default, the marks are then seized by thesecured party, who is usually a lender of money.

INTERNET RESOURCESPTO web site: http://www.uspto.gov (offers form for recordation cover

sheet for assignment of trademarks)

Trademark Manual of Examining Practice (TMEP): http://www.uspto.gov/web/offices/tac/tmep/index.html

(offers information on trademark maintenance andassignments)

Forms for assignments: http://www.allaboutforms.com and http://www.siccode.com/forms.php3

Guide to proper trademark use: http://www.inta.org/info/faqsU.htm#2

General information: http://www.ll.georgetown.edu and http://www.ipmall.fplc.edu

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Inter Partes Proceedings,Infringement, and Dilution

CHAPTER 6

CHAPTER SUMMARY

Disputes over use and ownership of trademarks are common. Such disputes typically fall intoone of four categories: inter partes proceedings, infringement actions, actions for dilution, andactions alleging unfair competition.

An inter partes proceeding is one brought before the Trademark Trial and Appeal Board andmay be categorized as follows:

• an opposition by a party to registration of a mark;• a petition to cancel an existing registration of a mark;• an interference; or• a concurrent use proceeding whereby parties each agree to use their respective marks in

specifically designated geographical areas.

An action for trademark infringement can be brought in federal court if a defendant’s use of amark is likely to cause confusion with a registered mark to an appreciable number of reasonablyprudent consumers about the source, origin, affiliation, or sponsorship of goods or services. Courtsconsider a variety of factors in determining whether there is a likelihood of confusion, including thesimilarity of the marks, the similarity of the goods/services offered under the marks, the similarityof trade channels, the strength of the senior mark, whether the sale is made on impulse or onlyafter careful deliberation, and whether actual confusion has occurred. A trademark infringementaction proceeds much like any trial: a complaint is filed, an answer is filed, motions may be made,

TRIVIA

• After objections from Pfizer, Inc., the owner of the mark VIAGRA®, the supplier ofNIAGRA (a drink marketed as “Viagra for women”) agreed to change the name of thedrink.

• In 2001, the maker of the nougat treat offered under the NUTELLA® mark forced theowner of the domain names GNUTELLA.DE and NEWTELLA.DE (used in connectionwith music) to cease use of the names on the basis that the latter marks infringed theNUTELLA® mark.

• Uncle Milton Industries still owns the trademark ANT FARM®. “Everyone else can callit a ‘formicarium,’” says a company spokesperson.

C H A P T E R 6

discovery occurs, and a trial is held. Relief may include injunctions, monetary damages, anddestruction of infringing articles.

An action for dilution may be brought even when another’s use of a mark is not likely to causeconfusion if another uses a mark in a way that blurs the distinctiveness of a famous mark or tar-nishes its reputation and goodwill.

If a mark is not registered, an action for unfair competition may be brought against a party whois using a false designation of origin or is engaged in false advertising. Additional protection isafforded by depositing a certificate of trademark registration with the U.S. Customs Service to pro-hibit offending goods from entering the United States.

Thus, securing a federal registration for one’s mark enhances the level of protection for a trade-mark owner who may then bring a civil action for infringement of the registered mark and mayobtain the assistance of U.S. Customs in blocking offending goods from entry into the United States.Owners of unregistered marks may seek protection under section 43 of the Lanham Act for unfaircompetition, but the remedies specifically provided for infringement actions and posting of ports arenot available to them.

INTERNET RESOURCESPTO web site: http://www.uspto.gov (offers basic forms for notices of

opposition and petitions to cancel registered marks)Additionally, select Trademarks and then U.S.Trademark Law: Rules of Practice & Federal Statutesfor rules relating to inter partes proceedings.

Trademark Manual of Exam-ining Practice (TMEP): http://www.uspto.gov/web/offices/tac/tmep/index.html

(offers information on standards for likelihood of con-fusion of marks in Chapter 12)

U.S. Customs Service: http://www.customs.gov (provides information aboutfiling requests with U.S. Customs Service to postports and prevent importation of infringing goods)

General information: http://www.ll.georgetown.edu and http://www.ipmall.fplc.edu

Sample cease and desist letters: http://www.chillingeffects.org (offers sample ceaseand desist letters and general information abouttrademark infringement)