Does a Trademark Trial and Appeal Board (TTAB) decision that there is a likelihood of confusion between two trademarks prevent federal district court trademark litigation?
The purpose of a trademark is two-fold: to identify the owner or “source” of goods and services, and to prevent consumer confusion in the marketplace. Therefore, the test for trademark infringement under the Trademark Act of 1946 (Lanham Act), is whether use of a trademark is “likely to cause confusion” with an existing, registered mark. A person generally may neither use nor register a mark that would be “likely to cause confusion” with an existing trademark. If a person uses a mark that one believes is likely to cause confusion, the owner of the registered mark may sue in federal court for trademark infringement. 15 U.S.C. § 1114(1). If a person seeks to register a mark that is likely to cause confusion with an existing registered mark, the owner of the existing registered mark may oppose the registration of the new mark before the TTAB. 15 U.S.C. § 1052(d); see id. §§ 1063, 1067(a).
In B&B Hardware, Inc. v. Hargis Industries, Inc., 134 S. Ct. 2899 (US 2014), the United States Supreme Court was asked to decide whether the TTAB’s determination of a likelihood of confusion precludes a trademark litigant from re-litigating that issue in a federal court infringement action involving a likelihood of confusion element.
Plaintiff B&B Hardware Inc. (“B&B”) produced industrial fasteners for the aerospace industry under the mark SEALTIGHT since 1990. B&B’s SEALTIGHT mark was registered with the PTO in 1993. Subsequently, Hargis Industries, Inc. (“Hargis”) adopted the mark SEALTITE for its self-drilling, self-taping screws for use in the metal-building industry. Hargis applied to register SEALTITE with in 1996, but its application was initially refused due to the existence of B&B’s registration. Hargis then sought to cancel the B&B registration alleging that the B&B mark had been abandoned. However, prior to a final decision by the Board, B&B sued Hargis in U.S. District Court alleging infringement of its registered SEALTIGHT trademark.
A jury in the District Court found in favor of Hargis that there was no likelihood of confusion between the marks. The parties appealed to the Eighth Circuit which affirmed the District Court decision and the issue was ultimately taken by the U.S. Supreme Court.
Reversing the Circuit Court, the Supreme Court remanded the case for further proceedings, holding that a likelihood of confusion determination by the TTAB should have preclusive effect as long as the ordinary elements of issue preclusion are met and the usages of the marks are materially the same.
“Issue preclusion” or “res judicata” is an important concept for both fairness and judicial economy. Essentially, litigants should not get two bites at the same apple. In the past, the TTAB would suspend its proceedings if a case was simultaneously pending in District Court.
The key take away for trademark practitioners is strategic since trademark oppositions and cancellations do not result in a damages award or determination of infringement. Yet, its decisions can now be used as the basis for finding infringement in District Court where an adverse decision may have far-reaching effects.
WHAT: From film to fashion, creative industries are taking steps to protect and promote original work. Designers and manufacturers need to know what steps they can take to protect their designs, their businesses, and their profits. The discussion will address issues related to how to protect original design (copyright & design patent) and the manufacturers (trademark, unfair competition).
Sometimes the Adler Law Group, (“Firm”) is called upon to perform trademark searches or trademark application filings. However, it is vital to understand the limits inherent in the process and the ability to determine the availability of any given trademark. The Firm NEVER conducts a search to determine, or opine on, the availability of any given trademark unless specifically engaged to do so.
A Trademark Search should always be conducted well before one begins using a trademark. For example, if you are planning a marketing campaign around a name or phrase, you should make sure that the proposed mark is “clear”, i.e., no one else is using anything “confusingly similar” for the same or similar goods and services. Failure to clear a mark for use can lead to claims for damages for infringement and/or dilution, loss of goodwill and loss of the goods themselves, not to mention loss of the time and expense creating, developing and marketing the product or service.
Trademark Searches Have Limits.
Although the search process is intended to reduce the potential for infringement and dilution claims, the risk of challenge to an application, registration or mere use of a mark is never completely eliminated. Even an especially thorough search may not uncover every potentially conflicting mark.
Registration Is Not Required For Trademark Rights.
Registration with the Trademark Office is not a prerequisite to obtaining trademark rights in the U.S. Many valid trademarks exist at common law without ever appearing on the federal trademark register. Some appear in state trademark registrations (although these registrations do not always reflect actual use); others are not registered at all.
Misspelled And Slang Words & Phrases May Be Trademarks.
Trademarks are source identifiers. therefore, to the extent that a trademark is distinctive, identifiable and memorable it is more protectable. Brand names often incorporate deliberate misspellings, puns, slang, and other variations on otherwise common words. Although a search would attempt to retrieve corrupted spellings, word plays and colloquialisms, there is no guarantee that all such variations will be found. As an additional precaution one should consider a search for foreign language equivalents and other variants on a proposed mark.
Mere Use of a Trademark Confers Common Law Rights?
Although some effort should be made to conduct a “common law” search using Internet search engines and news databases, this is not always conclusive of common law use. Since these databases were not expressly designed for trademark searching, there is no guarantee that all common law uses, corrupted spellings, irregular spacing or punctuation, or other variations will be identified.
The Existence of a Live or Abandoned Application Is Not a Legal Opinion About The Right to Use a Trademark Registerability, Strength or Weakness.
Please note that filing an application to register a federal trademark is not a legal opinion about the registerability of any particular trademark, the right or absence of the right to use a trademark, the strength or weakness of any trademark registration or application, or the likelihood that any third party may, or may not, seek to register a similar mark, seek to oppose any application, or seek to cancel any registration.
In fashion, innovation never goes out of style. Therefore, it is no surprise that fashion houses and clothing brandsmarket across many different
social media platforms. It is axiomatic that fashion marketing requires a deep understanding of the target audience, regardless of whether that knowledge comes from online or offline interaction. Social media provides a forum for a more authentic, transparent and personal engagement with the customer, but also highlights whether a brand has judged (or misjudged) its customer base.
To be successful in social media, brands need to harness the personality, wit, charm and, in all likelihood, free time of their staff. In order to ensure positive, informative and engaging social interaction, a fashion brand’s social media rules must be smart, positive and inclusive. Here are some guidelines for drafting a social media policy that will bring out the best in your brand, your employees (brand ambassadors) and your customers.
Rather than writing out a lengthy, legal boilerplate script, keep these considerations in mind when drafting your policy:
Philosophy. Begin with a discussion of how social media fits into an employee’s job expectations and performance. For example, guidelines are important, because if not followed “bad things” can happen, such as losing customers or vendors, the company could get into legal trouble, or worse, you could lose your job.
Behavioral Expectations. This is a good place to remind employees that even though it’s a big world, you are often in a small community and, on the Internet, it’s forever. What a person says can be seen by customers and employees all over the world. Remind employees to stick to their areas of expertise and use respectful conduct. Other watch words include “timeliness” (posts should be fresh, current and relevant), “perspective” (something that may sound clever and racy to one person may be inaccurate or offensive to another), “transparency” (be the first to point out that you are an employee and make it clear that you are not a company spokesperson) and “judiciousness” (use caution when discussing things where emotional topics like politics and religion and show respect for others’ opinions).
Channel expectations. If your company has a social media strategy, make sure employees know which sites (communication channels) are appropriate for which types of communications and marketing messages.
Contextual Expectations. Help employees understand the context within which they are engaging customers. Suggest using a conversational style. Remember that in customer’s eyes, “perception is reality.” Add value: Make sure your posts really add to the conversation. If they promote the company’s goals and values, supports the customers, improves or helps to sell products, or helps to do jobs better, then you are adding value.
Content Expectations. The policy must have clear and conspicuous language about what is considered company proprietary information, including current projects, trademarks, names, logos and how they may be used. Never: (i) discuss or post about financial information, sales trends, strategies, forecasts, legal issues and future promotional activities; (ii) post confidential or non-public information about the company; (iii) give out personal information about customers or employees; or (iv) respond to an offensive or negative post by a customer.
Consequences. Lastly, be upfront about the very real consequences if mistakes are made. If a mistake occurs, correct it immediately and be clear about what’s been done to fix it. Contact the social media team if there’s a lesson to be learned.
For Trademark lawyers and brand owners, Google’s AdWords program has engendered no small amount of debate. Many companies have tried, unsuccessfully, to hold Google liable for keyword advertising triggered when a brand-owner’s competitor buys keyword advertisements under the AdWords program by purchasing the brand-owner’s trademarks as keywords. Rosetta Stone’s lawsuit is no different.
However, what is different this time is that Google will have to defend at trial its program of selling companies’ well-known trademarks to the highest bidder. In the widely watched ruling, the Court reinstated most of Rosetta Stone’s claims relating to infringement and dilution.
On the claim of direct trademark infringement, the Court found that there was evidence in the record to create a question of fact as to whether “a reasonable trier of fact could find that Google intended to cause confusion in that it acted with the knowledge that confusion was very likely to result.” Google’s own internal studies suggested that it was likely confusion would result from the use of third-party trademarks.
On the claim of contributory infringement, the appeals court stated that the district court had improperly shifted the burden from Google to Rosetta Stone on the issue of whether Google allowed known infringers and counterfeiters to bid on Rosetta Stone’s trademarks as keywords
On the claim of trademark dilution, the appellate court reversed the district courts approval of Google’s “fair use” defense finding that the district court had not addressed Google’s good faith, and wrongly placed the burden of proof on Rosetta Stone, when the it was Google that was the party asserting fair use as a defense.
Lastly, the appeals court addressed the functionality doctrine which is the use of a product design considered necessary by the nature of the product itself. Such aspects of the product design are not protectable and others are free to use it. The court of appeals stated “[t]he functionality doctrine simply does not apply in these circumstances,” since Rosetta Stone’s trademarks were not a “functional” feature of its software.
Topics to be addressed include best practices for direct, digital and mobile marketing including advising on permission-based marketing, emerging technologies, the use of various social media platforms, as well as data security and privacy issues related to electronic and mobile commerce.
New FTC guidelines in the areas of advertising any marketing, as well as consumer privacy and security, have raised awareness of these issues for brands, marketing firms and service providers.
David M. Adler, Esq. is an attorney, author, educator, entrepreneur and nationally-recognized speaker in the fields of intellectual property, media & entertainment and technology law with a multidisciplinary practice focused on counseling businesses across the interrelated areas of Intellectual Property Law, Media & Entertainment, Information Technology and Corporate Law. David provides legal counsel on trademark and copyright clearance, registration and enforcement, digital and new media licensing, production, finance, regulations, Social Media, litigation and corporate-commercial transactions.
David has an extensive private-practice and in-house background counseling clients on marketing, advertising and content deals, lead-generation agreements, referral agreements, advertising-supported revenue deals, product placement, affiliate marketing/group-couponing platforms, CAN-SPAM compliance, digital rights management for video, music, and games. We work with many of the leading studios, labels, social networking sites, and online music companies. He also specializes in advising artistic talent and creative professionals in the arts, entertainment, media and sports industries.
In 2011, the Federal Trade Commission slapped Google and Facebook for violating their own privacy policies, forcing both to submit to years of privacy audits. In February, 2012 , the Obama administration issued a blueprint for a “Consumer Privacy Bill of Rights.” The FTC, the main government agency responsible for protecting privacy, called Monday for legislation that would give consumers access to information collected about them by data brokers similar to the rights they now have to review information amassed by credit reporting agencies.
The FTC’s report comes a little over a month after the White House released its privacy bill of rights that called on companies to be more transparent about privacy and grant consumers greater access to their data but that stopped short of backing an explicit “do not track” rule. The Federal Trade Commission’s 57-page privacy report consisted of a set of “best practices” that the Internet industry is expected to follow — or face sanctions. The report mirrors many of the provisions of the “Consumer Privacy Bill of Rights” released by the White House and represents the first serious efforts at striking a balance in online consumer privacy protection related to web usage.
Critics contend the framework is not as extensive as the White House Consumer Privacy Bill of Rights announced back in February. That already made provision for “Do Not Track” technology, with Google, Yahoo!, Microsoft and AOL – together responsible for almost 90-percent of behavioral advertising – already opting in. Privacy advocates have slammed the new” guidelines, arguing that the proposed system for ensuring online data security fails to take advantage of existing authority and relies too much on self-regulation of the online industry. The new framework “mistakenly endorses self-regulation and ‘notice and choice,’” the Electronic Privacy Information Center claims, ”and fails to explain why it has not used its current Section 5 authority to better safeguard the interests of consumers.”
It seems that every few months my clients get a raft of notices from very “official” sounding business, like “United States Trademark Protection Agency” seeking payment for services that appear to be necessary to maintain a trademark application or registration. As technology improves speed and efficiency, more of these opportunists are appearing.
U.S. Trademark Applications & Registrations are Public Records.
Filing an application for U.S. trademark registration makes certain information publicly available in the U.S. Trademark Office records. Several companies have been scraping these records and generating “official looking” notices and even invoices to unsuspecting companies. These notices appear strikingly similar to governmental agency communications and direct you to pay fees for registration, monitoring (keeping an eye out for applications similar to yours) and for filing with domestic or international lists, directories, etc.
MANY OF THESE ARE SCAMS.
Despite claims otherwise, the United States Trademark Protection Agency (USTPA) is NOT a governmental agency and the U.S. Trademark Office (USPTO) web site even showed a warning that the USTPA is NOT affiliated with the USPTO.
Some companies charge fees to be listed in their worldwide trademark registration directories. These are not official filings, their usefulness is limited and they have no legal effect.
Other companies hire non-legal administrators to do trademark filings without proper supervision or training. These companies can prove very costly due to filing problems. I hope you are not confused by such mailings. Often, if you are represented by counsel, the U.S. Patent & Trademark Officewill not send mailings directly to you, they will be sent to your attorney of record. While some of these companies offer legitimate services, you should seek advice from legal counsel before utilizing them. Some examples of these companies include the following:
Intellectual property is often the most significant driver of value among a company’s assets. Therefore, it is increasingly important for companies to actively manage their intellectual property assets to identify, categorize, register and enforce IP assets while minimizing the possibility of legal disputes.
Whether acquiring technology, developing new products or taking stock of the company’s intangible assets, companies must develop ways to protect their assets better, determine ways to realize more revenue from such assets, and reduce risks of costly litigation.
Below are ten intellectual property management tips that will help Companies and their counsel identify and protect IP assets and address infringement issues, among other key steps.
1. Identify: Simply put, think about what patents,trademarksand copyrights you might have and categorize them appropriately. This includes ideas in development.
2. Organize: Once categorized, review the relevant creation and publication/use dates. Determineregistrationstatus. File necessary maintenance documents as appropriate and create calendar/docket future due dates for supplemental filings.
3. Monitor: Review the USPTO and Copyright office databases periodically to ensure no junior users may weaken your rights.
4. Conduct a USPTO “Basic Search”: Start your search here. Individual results pages will include direct links to the mark’s records in TARR (best way to check current status of application/mark), ASSIGN (best way to see if the mark has been assigned), TDR (best way to retrieve relevant documents), TTAB (search and review board proceedings).
5. Conduct a USPTO Document Search: Use this database to determine existence of and locate documents related to specific applications.
6. Conduct a Copyright.gov Search: This is the best place to start with any copyrightrelated questions. Includes searched for copies of registered works.
7. Google- search: Great secondary, broad-stroke search. Tends to return higher percentage of irrelevant results, but good at finding that needle-in-a-haystack type rip-off/con artist.
8. Create Google alerts: Use these to stay abreast of relevant changes in the database. Narrow alert criteria to specific keywords/phrases.
9. Conduct a State Trademark Databases Search: Don’t forget your own back yard. Search state databases for d/b/as, etc. (IL=cyberdriveillinois.com).
10. Ask you lawyer about specific concerns. Every situation is different and the only way to properly asses the risks/costs of any course of action is to discuss your matter with a competent attorney who practices in this area.
Seemingly overnight, Social media has moved from a business curiosity to an invaluable tool for customer engagement, brand positioning and employee empowerment. For example, social media use for 18-29 year olds has grown from 16% in 2005 to 89% in 2010. A recent survey, now in its third year, found that Social Media is imperative and effective to stand out in a crowded market: 88% of all marketers found that it helped increase exposure and 76% found that it increased traffic and subscriptions.
Faced with the rapid adoption of social media services and platforms, companies find themselves in a dilemma: move quickly to adapt to new technologies, or put policies in place that support marketing goals. Finding the right balance between taking appropriate business risks and minimizing legal ones is a dilemma shared by all businesses, and it can be particularly tricky in the rapidly changing realm of social media. A social media snafu could pull a business into a range of legal imbroglios, involving employment law, intellectual property rights, advertising, defamation, libel, antitrust, and privacy protection. What follows is a list of five common social media legal mistakes that businesses are making.
1. Your Company does not have a social media policy.
Social media is going through an evolution from social media to social business. Yet In the rush to avoid being left behind, some 79% of companies do not have social media policies in place. Companies and employees are becoming deep users of Twitter, LinkedIn, Facebook, blogs, private-label platforms, and the like. Absence of a policy has led to lawsuits over basic issues such as ownership of LinkedIn profiles and Twitter followers. Lack of a policy could also lead to awkward situations that require a response, but may not rise to the level of a legal quandary such as public criticism by a volunteer or advisor.
Having a social media policy cannot prevent the occurrence of unintended consequences. However, it can address most risks that businesses will face and provide an informal framework for addressing issues that will inevitably arise before they become full-fledged emergencies that require a legal solution.
2. Your Company’s social media policy is unenforceable.
Not surprisingly, one of the most active legal areas of social media for business has been in the context of Employer-Employee relations. In 2011, the U.S. Chamber of Commerce released a report stating that the National Labor Relations Board (NLRB) had received 129 cases involving social media. The majority of claims concerned overly-restrictive employer social media policies or employee discipline and even termination based on use of social media.
More recently, the NLRB released updated guidance discussing 14 such cases in particular. Significantly, the NLRB criticized five employers’ social media policies, as “unlawfully overly broad” (e.g., too restrictive). In four cases, an employee’s use of Facebook to complain about their employer was held to be “protected concerted activity.” The benefit for employers is that the report frames the discussion for the appropriate scope of an enforceable social media policy.
3. Your employees don’t understand your social media policy.
For companies who have drafted a social media policy, another risk is that the employees who are engaged in social media on behalf of the company or brand do not understand the policies. Training employees about what it is, how it works and what’s expected is just the beginning.
For example, Australian telecomm company Telstra is an excellent example of social media transparency. This 40,000+ employee company mandates social media training built around a manageable policy focused on “3Rs” – responsibility, respect and representation. To promote awareness and understanding, the comic book-styled policy answers simple questions like “what is Facebook?” and more complex issues like employer criticism on personal blogs. Taking it a step further, the company published their entire social media training guide online for others to study and critique.
More importantly, the dynamics of online usage and marketing have changed. The availability of GPS data and commonly used technologies for targeted advertising and related services pose new privacy risks such as leaking personally identifiable information including usernames, email addresses, first names, last names, physical addresses, phone numbers, and birthdays. A recent series of articles by the Wall Street Journal analyzed the tracking files installed on people’s computers by the 50 most popular U.S. websites, plus WSJ.com and found that some sites like dictionary.com had over 200 such tracking cookies.
5. Your Company is Not Engaging In The Conversation.
Lastly, social media enables instantaneous, ubiquitous, electronic social interaction using highly accessible and scalable publishing techniques. The platforms and services that enable this interaction also provide an unfettered medium for defamatory statements about individuals, disparaging remarks about a companies’ products and services and inaccurate or misleading remarks by over-enthusiastic employees.
The legal risk is that a company often does not control such conversations which can quickly spiral out of control. Many web sites and blogs allow comments and invite participation by unrelated third parties. Having a strategy for when, how, and why to engage is critical to mitigate the legal risks since this area of law is notoriously fact and circumstances dependent and varies by jurisdiction.
Contact Us For a Consultation.
Is your business making one of the mistakes described above? Do you want to learn how to use social media to market and communicate with existing and prospective clients and do so in a way that minimizes potential risks and pitfalls? Hopefully, the guidance outlined above can serve as a good starting point for discussions about how best to use social media as well as suggestions regarding factors that firms may wish to consider in strengthening their compliance and risk management programs. We invite you to contact us with comments and requests about how we can help you educate your employees, prevent fraud, monitor risk, and promote compliance. We can be reached at lsglegal.com, 866-734-256, @adlerlaw and firstname.lastname@example.org.