trademarks kieran g. doyle long island import export association
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Trademarks
Kieran G. Doyle
Long Island Import Export Association
Types of Trademarks WordsWords LettersLetters SymbolsSymbols SlogansSlogans Numbers Numbers ShapesShapes Fragrance Fragrance ColorsColors CharactersCharacters SoundSound Design (Trade Dress)Design (Trade Dress)
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Examples- Words
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Examples- Slogans
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Examples- Proper names
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LETTERS
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LOGOS
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Examples- Characters
Types
ShapesShapes
FragrancesFragrances
ColorsColors
SoundsSounds
TasteTaste
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Trade Dress
What is it? What is it? How do you protect it?How do you protect it?
Filing Federal Application
United States Patent and Trademark OfficeUnited States Patent and Trademark Office Principal Register – for distinctive marksPrincipal Register – for distinctive marks Supplemental Register – for descriptive marksSupplemental Register – for descriptive marks
Basis of ApplicationBasis of Application Use in commerceUse in commerce Intent to useIntent to use Priority based on foreign application or Priority based on foreign application or
registrationregistration
Benefits of Federal Registration
Constructive notice to third partiesConstructive notice to third parties Constructive nationwide date of first useConstructive nationwide date of first use Prima facie evidence of validity of markPrima facie evidence of validity of mark Mark may become “incontestible”Mark may become “incontestible” Registration with U.S. Customs and Border Registration with U.S. Customs and Border
ProtectionProtection
Likelihood of Confusion–Factors
strength of plaintiff’s mark strength of plaintiff’s mark the degree of similarity between the two the degree of similarity between the two
marksmarks the proximity of goods or services of the the proximity of goods or services of the
partiesparties the likelihood that the plaintiff will bridge the likelihood that the plaintiff will bridge
the gap between the productsthe gap between the products evidence of actual confusionevidence of actual confusion defendant’s intent in adopting its markdefendant’s intent in adopting its mark the quality of defendant’s productsthe quality of defendant’s products sophistication of the relevant consumerssophistication of the relevant consumers
The factors are to be balanced;The factors are to be balanced;no one factor is determinative.no one factor is determinative.
What is a Statutory Fair Use?
1.1. Mark is descriptive if and used only to Mark is descriptive if and used only to describe Defendant’s goods or servicesdescribe Defendant’s goods or services
2.2. Term is used in good faithTerm is used in good faith
3.3. Term is used fairlyTerm is used fairly
““Nominative Fair Use”Nominative Fair Use”
1.1. The product or service in question must be one The product or service in question must be one not readily identifiable without use of the not readily identifiable without use of the trademark;trademark;
2.2. Only so much of the mark or marks may be used Only so much of the mark or marks may be used as it is reasonably necessary to identify the as it is reasonably necessary to identify the product or service; andproduct or service; and
3.3. The use must do nothing that would, in The use must do nothing that would, in conjunction with the mark, suggest sponsorship conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.or endorsement by the trademark holder.
New Kids on the BlockNew Kids on the Block 971 F2d 309 (9 971 F2d 309 (9thth Cir. 1992) Cir. 1992)
Anthony Orosz Anthony Orosz Assistant Director, Pharmaceutical CEEAssistant Director, Pharmaceutical CEE
[email protected]@dhs.gov646-733-5106646-733-5106
Partnering with US Customs and Border Protection
for Maximum IP Protection
CJ Erickson
Long Island Import Export Association
Scope Customs is a “police force” for 40
government agencies regulating both import and export
Why have a Customs strategy?
FTC: FTC: Made in USA standardMade in USA standard
USDA:USDA: quota/licenses/permitsquota/licenses/permits
CPSC:CPSC: children’s productschildren’s products
FDA:FDA: food, drugs, cosmetics, and food, drugs, cosmetics, and medical devicesmedical devices
NRC:NRC: watches with tritiumwatches with tritium
USPTO:USPTO: trademarks and copyrightstrademarks and copyrights
DOD:DOD: ITARITAR
DOC:DOC: Bureau of Industry and Bureau of Industry and SecuritySecurity
BOC:BOC: AES electronic data filingAES electronic data filing
OFAC:OFAC: Sanctions programs Sanctions programs
CBP IPR Protection
CBP devotes substantial resources to protecting intellectual property rights
CBP is vested with the authority to:
Exclude goods from entry
Detain merchandise
Seize merchandise
Forfeit counterfeit goods
Penalize violators
CBP Enforcement Strategy
CBP policy is a two-tiered enforcement approach Recordation of a registered trademarkRecordation of a registered trademark
Open and on-going communication with Open and on-going communication with trademark ownerstrademark owners
Submission of information and documentation identifying and describing both the mark and the filer.
Paper Electronically - https://apps.cbp.gov/e-recordations/
Fee of $190 for recordation of each trademark registration in a single class.
Additional $190 fee for each additional class of goods covered by a registration.
Recordation of Trademark with Customs
Supplemental Information
Educate Customs on what your products look like and how they come into the country
How to Identify Your Goods Samples of imported merchandise
Packaging
Detailed specifications, drawings, sketches and schematics
Copies of sewn-in labels, hangtags and markings RN number Fiber content Tracking label Country of origin
Exact size, color, and location of the mark
Mark and Product Features:
Location of mark on product
Product quality and overall appearance
Trim features such as zippers, buttons and snaps
Sample labels and tags
Shapes
How are Your Goods Imported? Copies of representative shipping documents,
packing methodology
Schedules of legitimate sources, authorized manufactures, channels of trade
List of suspected counterfeiters and suspected ports of entry
Disclosures of Information to Trademark Owners
Upon a counterfeit determination, CBP will disclose to rights owners the following information: Date of Importation Port of Entry Description of Merchandise Quantity Involved Name and Address of Manufacturer Country of Origin of Merchandise Name and Address of Exporter Name and Address of Importer
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Real or Counterfeit?Real or Counterfeit?
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Authentic LUGZ have: Counterfeit LUGZ have:
Black detailed tongue label Generic white tongue label
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4040
Conclusion Trademark owners are entitled to significant Trademark owners are entitled to significant
protection from CBP at minimal cost but protection from CBP at minimal cost but need to be pro-activeneed to be pro-active
Registered trademarks should be recorded Registered trademarks should be recorded with Customs to ensure maximum benefits with Customs to ensure maximum benefits under relevant statutes and regulationsunder relevant statutes and regulations
Proper recordation should be part of any IPR Proper recordation should be part of any IPR plan to:plan to: Safeguard against unauthorized importsSafeguard against unauthorized imports
Strengthen license and distribution Strengthen license and distribution agreementsagreements
Establish a strong basis for civil and criminal Establish a strong basis for civil and criminal actions against suspected infringersactions against suspected infringers