Kane on Trademarks–Book Review

Posted by Nicholas Wells on April 19, 2014  /   Posted in Trademarks


UPDATE:  PLI has provided a 20% discount for Kane on Trademark Law for readers of my blog.  Just use this link:

I work in several areas of law—copyright, social media, technology agreements, advertising and promotions—but at the moment, I spend the largest part of my day working on trademark matters.  If you’re familiar with trademark law, you know that the leading work in the field, cited by hundreds of court decisions, is J. Thomas Mc Carthy’s treatise, McCarthy on Trademarks and Unfair Competition.  Coming in at seven volumes—and growing, and with a front matter and Table of Contents that stretches 154 pages, McCarthy can be… unwieldy.  The $ 4,500 price tag may also be a concern for many smaller firms or lawyers who don’t spend all day handling trademarks.  Still, it is the resource everyone quotes.

So when PLI offered to send me a review copy of Kane on Trademark Law by Siegrun D. Kane, I was curious to see how it compared.

The short answer:  For most lawyers and in-house counsel, Kane’s book is the better choice.

Don’t get me wrong.  If you’re litigating trademark cases in federal court, you’ll probably like having McCarthy around.  But most of us don’t do that.  Kane on Trademark Law, now in its Sixth Edition, seems committed to remaining a one-volume work.  That choice is emblematic of its usefulness.  Everything you’re likely to need to know about trademarks is in your hand.  Kane is subtitled A Practitioner’s Guide.  Not a Judge’s Guide, or a Professor’s Guide, or even a Litigator’s Guide.

The Kane text is well organized, well footnoted, and well written, with headings that make it easy to find the topic you need.  (It also has a 60-page index.)  There are sections on false advertising, litigation, Internet infringements, licensing, and dilution, in addition to the sections you’d expect to find on clearing marks for registration, prosecution procedures, and proceedings before the Trademark Trial and Appeal Board.

Kane also comes with a CD-ROM that contains the entire text of the volume in searchable, linked PDF files, carefully formatted to match the printed book.  I’ve found this to be tremendously useful.

As an example of the different approach of Kane and McCarthy, consider the key trademark issue of likelihood of confusion between trademarks.  Kane has 35 pages on the topic, plus another 20 focused on counterfeiting.  McCarthy devotes Volume 3 to the topic—800 or so pages—plus innumerable related sections that appear in other volumes (See, e.g., Chapter 31, Volume 6, Defenses to Infringement).  Or consider the sections on Inter Partes TTAB proceedings.  Kane has 54 pages of succinct text on topics that include procedures, grounds, defenses, burden of proof, and review routes for TTAB decisions.  McCarthy devotes… well, you get the idea.

I love McCarthy, but I keep using Kane because most of the time, I don’t have the time to use McCarthy.  And my clients don’t have the money.  Kane reminds me of the points I need to know.  It references the statutory sections and leading cases.  It summarizes and recommends practice steps without as much scholarly background.  Most days, it’s just the better tool for what I need.

I think that’s also true for those, like in-house counsel, who are dealing with trademarks, social media, advertising, employment, real estate leases, contract disputes… and that’s just before lunch.  Kane on Trademarks will serve in-house counsel by providing guidance on most trademark issues that they are likely to face.  They’ll hire litigators to take trademark cases to the Federal Circuit and they will use McCarthy.

Kane does miss some areas that I wish it included.  There appears to be nothing about ex parte appeals at the Trademark Trial and Appeal Board.  Perhaps it’s not a critical topic for most readers, but I’d like to see more on it.  There is a little about using the Madrid Protocol, but virtually nothing about international trademark protection.  This is clearly a book about U.S. law, but given its apparent target audience, at least a brief section on how international trademarks operate with some strategy pointers and references would be appropriate.  Finally, there isn’t much about the procedures for handling disputes.  True, those procedures are based on the TTAB manual and the Federal Rules of Civil Procedure.  But guidance in a book like this goes a long way to help those not familiar with the rules.

Despite a few minor weaknesses, Kane on Trademarks seems to spend a lot of time on the corner of my desk.

Michael Jordan Doesn’t Need Your Help, Thanks

Posted by Nicholas Wells on February 28, 2014  /   Posted in Right of Publicity

If you use the name of a famous person in your advertisement, do you need that person’s permission?  What if it’s a news story instead of an advertisement?  What if it’s a “congratulatory” message that seems to fall between these two?  The U.S. Court of Appeals for the Seventh Circuit has just issued a ruling in favor of Michael Jordan that says a “congratulatory” message was really a type of advertisement and subject to the same restrictions.  So you’d better get permission before using that celebrity’s name.

The case started in 2009 when a commemorative issue of Sports Illustrated was devoted entirely to Michael Jordan’s basketball career.  Jewel Food Stores ran a full-page ad that congratulated Michael Jordan on being inducted into the Hall of Fame.  The ad included a pair of “23” sneakers and showed the logo for Jewel-Osco prominently in the center of the page.

Michael Jordan sued Jewel for misappropriation of his identity for their commercial benefit (this is also called a right of publicity under many state laws).  Jordan asked for $ 5 million in damages, plus punitive damages and treble damages under the Trademark Act.

The U.S. District Court sided with Jewel, saying that Jewel had a right under the First Amendment to congratulate Jordan.  Last week the Seventh Circuit reversed the district court and said that the Jewel ad was commercial speech and thus was not entitled to such strong protections under the First Amendment.

In sum, the Seventh Circuit said that the ad, even if it was a “congratulatory message” was clearly intended to be a “promotional device for the advertiser” that would “exploit public affection for Jordan.”  Ouch.  In other words, Michael Jordan doesn’t need gratuitous promotion by a food store when use of his name or image already has tremendous commercial value.

(Notice that I did not include a photo of Michael Jordan in this post!)

Social Media and the Law: Book Review

Posted by Nicholas Wells on September 27, 2013  /   Posted in Internet Law

UPDATE:  PLI will give a 20% discount to anyone buying Social Media and the Law through this link. Thanks for reading!

Social Media started as a technology niche but has now become a part of everyone’s lives.  Understanding its impact on business development, customer relationships, and product placement—among other issues—is critical for any business that wants to grow and succeed.

As hundreds of millions of customers use social media, the legal issues that arise from that use (or misuse) are also increasing in prominence.  Most lawyers, however, are unsure how to approach legal issues in the context of social media.  For example, an employment lawyer knows how to deal with termination of an employee for defaming the company in a newspaper article.  But what about an employee whose activities on social media threaten the value of the employer?  An intellectual property lawyer knows about copyright infringement, but what will a judge consider “fair use” on a photo sharing website?

At Wells IP Law, we deal with social media legal issues regularly for our clients.  Anyone who doesn’t focus their legal practice on social media would be well-served to pick up a copy of Kathryn L. Ossian’s Social Media and the Law, recently published by Practising Law Institute.

PLI recently sent me a review copy of this book.  I found it to be a great resource, even though I work in this field regularly.

Ossian took on a huge task in preparing this volume with her co-authors.  The legal impacts of social media are far-reaching and a treatise that attempted to cover every possible answer would be doomed to failure.  But the approach Ossian has taken is the right one.

Different sections of the book discuss the impact of social media in different areas of the law.  First, each section provides an overview of legal principles in that area; then the authors examine how those principles are applied in the context of social media.  Specific issues are called out, with caselaw discussed whenever appropriate.

The topics include privacy; copyright and trademark; defamation; employment issues; advertising law; criminal law; compliance issues for regulated industries; and civil discovery.

It appears that Ossian’s goal is two-fold:  (1) guide the expert in a particular legal field in understanding how the latest caselaw applies to social media issues within that field; and (2) give the non-expert an overview of topics and a list of legal issues to watch for.  Those non-experts will then have a good idea of when to bring in more expert advisors when difficult issues arise.  But they won’t be left in the dark about what the issues are.

General counsel in almost any industry would do well to have this book on hand and become familiar with it for the day when the inevitable social media legal issue arises.  Even for the social media novice, Ossian provides a good overview of terminology and a discussion of the legal impact of social media on both businesses and individuals.

In reading this book, I sometimes felt like I wanted more information, or at least more concrete answers.  Alas, there are few decided cases in this field and many issues that we can identify but that haven’t yet been resolved by any court, so that all Ossian (or anyone) can do is offer best practices based on an analysis of analogous situations outside of social media.  Ossian also provides helpful (and lengthy) appendices of relevant state statutes.

I did not find much discussion of working with social media companies to resolve legal matters.  Certainly, the legal terms and privacy policies of leading social media companies change regularly (Facebook is infamous for this), but some best practices and principles remain applicable, and hearing the experience of those who have interacted with these firms to resolve infringements, disputes, and so forth, would be a helpful addition to the book.

The use of several co-authors also means that the structure and approach differs somewhat between sections of the book.  This is not a huge issue, since it will often be used as a reference and not read cover-to-cover, but a more consistent treatment of topics would be helpful in future editions.

Still, my overall assessment is that this is a timely and useful volume that I plan to refer to frequently.

Brand Protection in China: Don’t Wait!

Posted by Nicholas Wells on September 05, 2013  /   Posted in Trademarks

Brands in ChinaThe third best-selling sedan in California right now is not Lexus or BMW or Mercedes. It’s an electric car called Tesla.  But Tesla was not in the news last month because of its record sales.  It was in the news because its expansion plans in China were held back by trademark problems.

A man in Guangdong purchased the Tesla domain name and registered the Tesla trademark in China before Tesla Motors of California bothered to do it.  It will likely cost Telsa millions of dollars to buy these intellectual property assets for its Chinese business.

Apple settled for $ 60 million to obtain rights to its iPad brand in China.

Google reportedly paid $1 million for the Google domain name in China several years ago.

All three companies could have reserved their intellectual property in China for less than $500 if they had started sooner.  Ouch.

China: Challenges and Opportunities

The problems in China are similar to the land rush that occurred with domain names in the 1990s, when “squatters” bought famous brands and then resold them to brand owners after the brand owners realized that they needed a website.  Some may say that these Chinese individuals are acting unethically.  In one sense, I agree.  On the other hand, they are seizing a business opportunity and making the most of it.  And they are not breaking any laws.

In fact, trademark laws in most countries permit the same thing that we’re seeing in China.  The difference is that it costs more to register a trademark in most places as compared to China, so squatters are less likely to do it; and brand owners are more likely to be forward thinking in protecting their IP in traditional western markets in Europe, even though—in the back of their minds—they know they need to do something in China.

My point is that you don’t want to be in the next news story.

Several of my clients have already faced trademark problems in China.

Brand protection in China can be challenging.  The language is very unfamiliar to most of us.  Laws are still being revised.  (A revision to the Chinese trademark law was passed last month for the third time since 2000.)  Those who are not working with a Chinese business partner may feel lost.  Businesses may also think that enforcement of their rights in China is impossible, so why bother even trying.

But as Chinese businesses develop their own brands, enforcement of brand protection for foreign companies continues to improve.  Smart businesspeople realize that the challenges can be overcome.  They invest a little to get their brand protection in place now.  Before someone else does.

At Wells IP Law, we can manage protection of your intellectual property in China through several qualified attorneys that we work with.  Or we can connect you directly to them.

But don’t wait.  And don’t blame anyone but yourself if your brands are already taken when you get there.

Tips for Brand Owners Entering China

  1. If you’re big enough to afford a U.S. trademark registration, you should already be thinking about this issue and considering whether you might ever want to be in the Chinese market.
  2. Realize that someone in Asia is probably already ahead of you. They’re just waiting to see if you’re big enough to be worth their time.
  3. Commit to investing $ 500 to protect your brand in China.  If Tesla, Apple, and Google had done just this much early on, their trademark troubles would not be in the news.
  4. If possible, protect both English and Chinese character versions
  5. Consider registering a China domain name in either regular or Chinese characters, if not both.
  6. Remember that a trademark registration in China is not enough if you are also doing business in Hong Kong, Macau, and Taiwan.  You must register brands in all four jurisdictions separately.
  7. Look for a Chinese business partner through trade missions or government programs.  Sharing some of your profits is worth the benefit of having a knowledgeable local presence.


Legal Discipline and LegalZoom

Posted by Nicholas Wells on April 06, 2013  /   Posted in Trademarks

A few months ago, the U.S. Patent and Trademark Office dealt with a disciplinary case where a person ran an “inventor’s network” and handled more than 150 patent applications, even though he was not a registered patent attorney. Although the bar to becoming a registered patent attorney is high, the USPTO has very rarely gone after anyone for the unauthorized practice of patent law. And while this was perhaps an especially blatant case, it highlights the need to protect the public by enforcing the ethics rules that attorneys are required to live by.

Thanks to PLI for bringing up this disciplinary case.

To be clear, I am not a registered patent attorney. My undergraduate degree is in Linguistics so I’m not eligible to sit for the patent bar. I work with several trusted colleagues whenever my clients need assistance with patents.

But this issue brings to mind the concerns I have as a trademark attorney when I see people using LegalZoom and similar services to file their trademark applications.

I don’t think LegalZoom is doing anything illegal or unethical. They save people a lot of money compared to what most trademark lawyers charge.

Yet there is a serious but subtle risk that people who use LegalZoom or similar services will assume they are receiving “professional” guidance without realizing the limits of that guidance. The line where procedural guidance ends and legal advice begins is a very fuzzy one for virtually all non-lawyers. As a result, I believe that LegalZoom customers are likely to assume, despite all disclaimers to the contrary, that LegalZoom will exercise more judgment and expertise on their behalf than is actually the case.

I see this when I help someone who has filed for a trademark through LegalZoom and then needs assistance resolving a problem that develops. The problem will often be one that could have been avoided if a lawyer had guided the client through the application process. That was not the job LegalZoom was hired to do, but the client seems perplexed that the professional service that they paid for didn’t foresee or avoid the problem that arose.

I suspect that the same issues may arise when LegalZoom or similar document service companies form new LLCs, draft wills, or perform other services. The problems are just manifest more quickly for a trademark, which is examined by the USPTO a few months after filing.

There is a price to be paid for professional, personalized legal services. It is a much higher price than what automated or cookie-cutter service bureaus can offer. But these low-cost service bureaus need to be certain that customers understand what they are—and are not—receiving for their discounted fees.

When Superman Sues You

Posted by Nicholas Wells on February 12, 2013  /   Posted in Trademarks

Can Super Heroes Be Trademarked?

A recent piece at the Guardian discusses the efforts of comics creator Ray Felix to resolve a dispute with Marvel Comics and DC Comics about his comic title A World Without Superheroes.  The issue may shock you:  SUPER HEROES is a registered trademark in the US for comics, so Felix’ use is—say Marvel and DC—trademark infringement.

I expected Batman, Spiderman, Iron Man, Green Lantern, and Incredible Hulk to be trademarked.  But Superheroes?  It didn’t seem possible.  I thought of the Super Friends  (which I used to watch religiously at 6:30 every Saturday morning).  What would Aquaman do in a situation like this?

So I checked it out, and it’s true:

  • US Registration 0825835 for SUPER HERO for costumes
  • US Registration 1140452 for SUPER HEROES for toy figures
  • US Registration 1179067 for SUPER HEROES for comic books and magazines

Plus a few others, all apparently owned by a subsidiary of Marvel Comics.

It doesn’t seem right, and maybe it isn’t.  From the perspective of a trademark lawyer (that’s me), the trademark Super Heroes may well have become generic.  That’s not a slight on Spiderman.  It’s a legal term meaning that the words Super Heroes are no longer connected in the minds of customers with a particular seller—a particular source for comics books or toy figures.

Many famous brands have already become generic, or nearly so: When we talk about a thermos, or a band-aid, or a kleenex, we’re using a word that someone invented as a trademark (thermos brand vaccuum flasks; band-aid brand bandages, and kleenex brand facial tissues, to be precise).  But then those words became so closely associated with a type of product that they were no longer associated with the single company that invented the term.

One could say that the same thing has happened with Super Heroes, if for no other reason than that everyone who reads about the troubles of Ray Felix trying to use the word Super Heroes in the title of his comic book is incredulous.

But the problem facing Mr. Felix is one common to small businesses everywhere.  Marvel owns the trademark registrations above, so it is free to assert them—to say that they are still valid.  If you want to disagree, you’ll have to do a boatload of research, get a federal judge to look carefully at the issue, and then rule in your favor.  Even if we all think you’ll win, someone has to pony up $100,000 or more to make it happen.

Until then, at least we can sleep well at night knowing that Marvel Comic’s lawyers are keeping the streets safe for Superman.

Three Reasons Why You Should Be Careful Using Crowdfunding

Posted by Nicholas Wells on February 09, 2013  /   Posted in Trademarks

jobless manCrowdfunding can be great.  Kickstarter, Indiegogo and dozens of others can get donors signed on to your projects and help you create the Next Big Thing.  But before you rush to post your idea and start collecting quarters, consider the risks as well.  Seth Quest forgot about that part.  He just declared bankruptcy because a donor to his Kickstarter project sued him for nonperformance (Seth couldn’t bring his project to market after collecting donations).  Sure, I think the guy who sued him was being unreasonable, but there are lots of unreasonable people out there.

Here are three key legal risks that you face when you post a project on a crowdfunding website.

1. Killing Your Patents

Disclosing your patentable idea starts a one-year clock under the U.S. Patent Act.  If a patent application is not filed during that time, then a patent cannot be filed.  And the news is even worse in other countries where you might want to protect your idea.  AND, beginning in a few weeks, the American Invents Act will have the U.S. move to a “first to file” patent system.  At that point, you could be in a race with your donors to reach the patent office.

2. Losing Your Brand

The basic rule is that whoever applies to register a trademark first will get the registration and can block other similar trademarks.  If you use your cool new brand name and logo to submit a crowdfunded project, someone else could file for trademark protection before you do.  You could file a lawsuit to get the trademark back, but that would eat up a lot of those crowdfunding quarters you’ve been collecting.

3. Giving Away the Farm

Even if you don’t make any mistakes in disclosing your trademarks or patentable ideas before you protect them, you could undermine your success by using an idea or contribution that someone sends you or posts on the crowdfunding website.  (Most allow comments on publicly visible projects.)  Some sites (such as Indiegogo) specify that the project sponsor owns rights in all submitted comments.  But one of the largest crowdfunding sites, Kickstarter, does not even define the ownership of submitted materials.  So if you use someone’s suggestion, it’s not clear whether they might have a legal claim against you for a share of your success.

If you’re using crowdfunding, you may not be thinking about the business and legal issues that will crop up once you’re successful.  But you should at least consider these issues before publishing your best ideas for the whole world to see.

Eight Reasons Not to Use the Madrid Protocol for Trademark Protection in the United States

Posted by Nicholas Wells on February 06, 2013  /   Posted in Trademarks

Note:  I first published this article as the cover story in the Dec/Jan issue of ITMA Review, a print-only publication from the UK’s Institute of Trade Mark Attorneys.  It was co-authored with Allister McManus of ipconsult.

The Madrid Protocol is a tremendous tool for helping your clients secure trademark protection in other countries.  In some cases, costs can be cut in half by using the Madrid Protocol.  The ease of handling renewals and assignments is a further benefit— a modest fee and a single form (in English) can update trademark records in dozens of countries.

As a quick review, to use the Madrid Protocol, one begins with a local trademark application (the Basic Application as filed at the Office of Origin—the IPO).  The owner requests the IPO to submit the application to the World Intellectual Property Organization (WIPO) where it becomes a so-called International Registration, a supranational document that does not protect the mark in any country, but which permits WIPO to submit it to all of the designated countries.  The designation of countries in which protection is desired is called a Request for Extension of Protection (REP).  Each countries’ trademark office then reviews the application and (hopefully) approves it under local laws.

Despite the potential advantages of using the Madrid Protocol, it isn’t right for every mark.  The typical concerns are well known to most trademark practitioners.  Two of the most serious limitations are these:

First, if the Basic Application is abandoned or cancelled anytime during the first five years after the International Registration is issued, then all foreign applications and registrations that are based on the International Registration will automatically be cancelled as well.  This is called a Central Attack.  Such cancelled local marks can be converted to standard national marks, but only at significant expense and effort.

Second, the owner of the International Registration cannot transfer ownership of any dependent marks to an owner that is not resident in a member country.  This means, for example, that marks obtained under the Madrid Protocol cannot be transferred to a Canadian owner without first withdrawing the marks from the Madrid System at great expense.

While experienced UK trademark practitioners are well-aware of the advantages and disadvantages of Madrid-based applications, they may be much less aware of additional obstacles raised under the trademark laws of the United States for applications submitted through WIPO.  The remainder of this article discusses eight concerns arising under U.S. law that are specific to trademark applications filed in the U.S. through a REP under the Madrid Protocol.

1. Inability to Use Supplemental Register

Marks cannot be registered in the U.S. if they are “merely descriptive” of the relevant goods and services unless the mark has acquired secondary meaning as a trade mark.  Where this not possible, U.S. law provides a secondary trademark register, called the Supplemental Register, where descriptive marks can be registered without showing secondary meaning.  A mark on the Supplemental Register gains some benefits of registration, including the ability to preclude other confusingly similar marks from registering.  After five years on the Supplemental Register, a mark is eligible for registration on the Principal Register, where it will be accorded full legal protection.

But Madrid-based applications are not eligible for the Supplemental Register.  If a mark within a Madrid-based application is deemed merely descriptive, there is no possibility of moving it to the Supplemental Register as would be done with a direct-filed application.  Instead, the must be abandoned and a new national application filed, incurring additional fees and losing the priority date of the Madrid-based filing.

2. Inability to change class numbers

The next three points involve class designations for the goods and services within an application.  The U.S.P.T.O. is known (infamous) for the specificity that it requires in a description of goods and services.  For direct-filed applications, however, the Office is flexible in permitting adjustments to ensure that anything within the scope of the original language of the application can proceed to registration (barring other obstacles).  Because Madrid-based applications are tied to an International Registration, however, the U.S.P.T.O. imposes several restrictions in how a description of goods and services can be amended.

The first restriction is that the class numbers used within a Madrid-based application cannot be changed.  For example, if a Madrid-based application lists “laminating film for inkjet paper” in class 16, the U.S.P.T.O. will reject the description because these goods belong in Class 17.  Yet the Office will not permit the goods to be moved to Class 17; the application can only contain the specific class numbers that were originally submitted by WIPO.  In this example, the application cannot be saved because the wording is narrowly drawn.

3. Inability to move goods between classes

Within direct-filed U.S. applications, it is permissible to move goods between classes to achieve correct classification.  That is, any goods that are within the scope of the language of the original application may be placed within any class that is part of the application.  For example, if an application included “Mattresses and mattress pads” in Class 20 and “bed sheets and duvet covers” in Class 24, the Office would permit “mattress pads” to be moved to its correct place in Class 24.

But in a Madrid-based application, such moves are not permitted.  In the above example, “mattress pads” would need to be deleted as not being in Class 20, even though the proper class (24) is already part of the application.

4. Inability to add classes

A final related issue is that classes cannot be added to an application.  Within a direct-filed application, it is a simple matter to pay an additional per-class filing fee to add a class to an existing application so that goods included in the originally filed application can be properly classified.  This is useful in at least two circumstances.  The first is where many items are listed in one class and the trademark examiner requires that an item must be moved to its proper class, but that class was not part of the original application.  The applicant may pay the additional per-class fee, have that item moved to the newly added class, and the application proceeds.  The second is where a client wishes to delay payment of some fees.  Goods in many classes can be listed in a new application without designating any class numbers.  The trademark examiner will issue an office action listing the applicable classes for the goods in the application.  The client can then pay the additional per-class filing fees (or delete any unneeded goods and services) so that the application can proceed.  This may allow a delay in paying the majority of filing fees for more than 9 months from the original filing date.

But this option is not possible with a Madrid-based application.  Considering the above example, if a Madrid-based application included “Mattresses and mattress pads” in Class 20, it is not possible to add Class 24 to the application.  The only option is to delete “mattress pads” from the application.

To be fair, the above three issues related to the description of goods and services are less traumatic than they might be because Madrid-based applications coming to the U.S. from the U.K. typically have more broadly worded descriptions that permit greater flexibility when submitting amendments than might otherwise be the case.  For example, if a class heading has been used, then this can often be amended to include anything that would be within that class.  Yet we have seen numerous instances where clients wishes to maintain certain items within a pending Madrid-based application but were forced to delete it (or abandon an application altogether) because of the challenges noted above.

5. Inability to add further filing bases

A Madrid-based application is submitted to the USPTO by WIPO under Section 66(a) of the U.S. Trademark Act.  Direct-filed applications may be filed under one of several different filing bases, such as 1(a) for “use in commerce” applications, 1(b) for “Intent to Use” applications, and 44(d) to claim date priority to an earlier non-U.S. application.  None of these filing bases can be included with a Madrid-based application, which can only list Section 66(a) as its filing basis.  The practical limitation that this imposes is that a Madrid-based application has no flexibility to specify an earlier priority date under the Paris Convention, and no ability to immediately allege use of the mark in commerce, which may result in a weaker registration.

6. Weakness of registrations in disputes

In the U.S., rights in a mark arise through use of the mark in commerce.  U.S. law does permit Madrid-based applications to register without first establishing use of the mark in commerce within the United States—this is one great advantage they have over direct-filed applications.  Yet if a dispute arises in a U.S. court regarding a Madrid-based registration, the opposing party will seek cancellation of the mark because there is no record that the Madrid-based registration has been used in commerce in the U.S.  Thus, the burden of proving use of the mark will fall on the mark owner.

Conversely, a direct-filed U.S. application must provide the U.S.P.T.O, with evidence of using the mark in commerce before it can register.  Because of this requirement, a direct-filed registration is prima facie evidence of using the mark, and in a dispute the burden falls on the opposing party to show that use has ceased or was fraudulently alleged to secure the registration.  Thus, in general, direct-filed applications are in a better position during litigation that Madrid-based applications.  (After a Madrid-based registration passes its six-year anniversary so that evidence of use has been submitted to the U.S.P.T.O., the Madrid-based registration would be on an equal footing with a direct-filed registration.)

7. Inability to modify marks

After a mark has been submitted to WIPO to become an International Registration under the Madrid Protocol, the mark itself cannot be changed.

The U.S.P.T.O., however, allows “non-material” changes to a mark, both during prosecution and after issuance of a registration (via Section 7(e) of the Trademark Act).  Examples of non-material changes include redesigned logos that adjust non-material design elements or word marks in which a hyphen or space is deleted or added.  Thus, if the owner of a mark makes minor changes to the mark after the initial application is filed, the mark as used in commerce will differ from the mark as it appears in the trademark application or registration.  This may be raised as an issue in any dispute proceedings.  It will also impede the owner’s ability to submit an acceptable Statement of Use to the U.S.P.T.O., which may result in the registration being cancelled.  We have seen cases where a word mark was registered with a space but was being used without a space; the Statement of Use was rejected because it did not match the mark as registered, so that the mark had to be amended under Section 7 before the Statement of Use could be accepted.

8. Danger of missed deadlines

An International Registration is subject to renewal every 10 years by filing a renewal form and appropriate fee with WIPO.  This serves to renew the mark in all countries in which it is registered through the International Registration.

However, the U.S.P.T.O. imposes separate and distinct maintenance rules for U.S. marks, including those obtained via the Madrid Protocol.  Specifically, an affidavit to allege use of the mark must be filed between the 5th and 6th anniversary of the date of U.S. registration (not the date of filing); and between the 9th and 10th anniversary of the date of U.S. registration and every ten years thereafter.  If the International Registration is renewed, but the proper affidavits are not filed directly with the U.S.P.T.O., the U.S. registration will be cancelled.

Our experience has shown that these U.S. filing deadlines are often missed by non-U.S. mark owners, resulting in unintended cancellation of U.S. marks.

In summary, the Madrid Protocol is a powerful tool for lowering costs and managing the maintenance of international trademark portfolios.  When such portfolios include the United States, the above factors should be taken into consideration to decide whether the Madrid Protocol or direct filing in the United States will better serve the client’s needs.

The Khroma Brand Name & The Kardashians – Trademark Law at work

Posted by Nicholas Wells on January 24, 2013  /   Posted in Trademarks

Kardashian TrademarksChroma is the Greek word for color, and many entrepreneurs are now sorry that they ever decided to use even a variation of that word in their business names. Since the Kardashian sisters have entered the makeup marketplace with their line of Kardashian Khroma makeup, small cosmetic business owners across the country have begun to fear for the future viability of their companies.

According to Manta, a small business community resource, there are at least 200 small United States businesses that use the word chroma to identify their companies.  Many of these are cosmetic concerns, and their owners are already reeling from the power of the Kardashian name.

Limited Possibilities for Growth
Kardashian Khroma is now available nationwide at Sears, K-Mart and CVS. Small cosmetics companies who had previously planned to take their brands national are now stymied, since no major department stores would consider stocking two brands of equal products with nearly identical names. Individual producers of their own brands of chroma cosmetics also legitimately worry that consumers will be confused because of the similar product names, and will desire the soon-to-be well known Kardashian brand over any others.

While entrepreneurs who feel they have a superior product can rename their businesses and start over, many who have toiled for ten or more years to build their own brands have no desire to give up what they have fought for. Therefore, the answer for them is litigation.

Common law Rights

Common law trademark rights do exist, although most intellectual property law attorneys feel that the use of the common law statutes is one of last resort. While the common law can be of some assistance in the attempt to protect a business name, the use of this legal theory does not offer the same benefits that genuine trademark registration does.

Trademark Rights

Lee Tillett, an Orlando Florida businesswoman who, since 2004 has marketed a line of cosmetics she has called Kroma, applied for a registered trademark with the US Patent Office in 2010. The trademark was finally granted last year. When the Kardashians attempted to trademark their Khroma name, their application was refused, but that fact didn’t stop Kim, Khloe and Kourtney from launching their brand anyway.
If a registered trademark is infringed upon, the legal remedies are the ability to recover lost profits, the collection of monetary damages along with attorney’s fees, and even triple damages if the infringement is found to be willful.

Tillett attempted to reach a mutually acceptable settlement with the Kardashian’s licensing company, Boldface, but talks failed, and Boldface actually sued Tillet’s company in order to get legal permission to use the Khroma name. Tillet countersued for damages of $10,000,000.

The progress and eventual result of this litigation will be carefully watched by lots of small businesses, and even if no one is legally enjoined from using variations of the chroma name, it’s obvious who has the global reach and financial power to eventually prevail.

Free Trademark Guide

Posted by Nicholas Wells on December 12, 2012  /   Posted in Ads

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