Trademark Titan™ Blog

Information for in-house counsel, brand owners and entrepreneurs. Committed to international trademarks, copyrights, branding and other IP issues.

Trademark Titan™ Blog  - Information for in-house counsel, brand owners and entrepreneurs. Committed to international trademarks, copyrights, branding and other IP issues.

Avoiding “Another” Trademark Trap: “Don’t Sweat It” When it Comes to Trademark Selection

There are many reasons why trademark owners should carefully select and clear new product names, trademarks and even product slogans and phrases.  Some of which include selecting trademarks and slogans that are immediately eligible for trademark protection and do not infringe third party rights.  

Even when brand owners select trademarks and/or slogans that would likely not infringe third party trademark rights, it may still be prudent, in some cases, to choose another mark.  For example, selecting marks that would likely get lost in the marketplace noise with other similar trademarks is not advisable.  

Furthermore, it is not a good idea to select marks that would likely draw fire from a competitor that aggressively enforces its marks against uses of similar marks – even when consumer confusion is unlikely (we call those parties “Trademark Bullies”).  There may also be instances when the adoption of a mark – although likely not infringing – may still draw an objection from a competitor or another party in the trade – just because.     

Not until a trademark attorney understands the gray of trademark law – will s/he understand the gray of trademark law and recognize that selecting a different mark altogether is sometimes your best business option – even if that is not what you want to hear.  From time to time I need to remind clients that they do not hire me so that I can tell them what they want to hear – but rather what they need to hear.  As Robbie Robinson almost once said “You might hate me now, but you’ll learn to love me later.”  

There are instances when good business decisions (based on sound legal advice) are to simply consider different product names or slogans rather than spend hundreds of thousands of dollars (or more) defending a trademark dispute brought by an over-zealous plaintiff with a weak case.  You might win the legal battle, but at what business and economic costs?  

Companies should obviously steer clear of adopting infringing trademarks, product phrases and slogans and marks that would likely draw fire from a competitor.  In September of this year, Oakley, Inc. drew such fire when it was sued for trademark infringement for using the trademark / phrase “Sweat it Out” for sweatbands.  The plaintiff, Lontex Corp., is a manufacturer of athletic apparel and owner of several United States trademark registrations for the mark SWEAT IT OUT for athletic apparel, including sweatbands. 

The complaint alleges that Oakley’s use of SWEAT IT OUT for sweatbands constitutes counterfeiting and is likely to confuse or deceive consumers into believing that Oakley’s sweatbands originate with or are sponsored by Lontex in violation of the Lanham Act (Trademark Act). 

Lontex also alleges that Oakey’s misuse of the mark SWEAT IT OUT constitutes willful trademark infringement, thus Lontex is requesting that the court award triple damages, costs and reasonable attorneys’ fees.  

Brand owners should spend their time and resources on brand development and growth and not on defending unnecessary trademark infringement allegations over the use of product slogans or phrases, not to mention the possibly of spending thousands or hundreds of thousands on re-branding (and, yes, I said the “R” word). 

To read more about my views on trademark clearance and selection, read my blog posts here, here and here.

Trademark Titan Two-Minute Snap Shot: Trademark Trial and Appeal Board and its Legal Effect for Trademark Disputes

The United States Trademark Trial and Appeal Board (“TTAB”) has the authority to determine numerous trademark registration issues, including whether a trademark is eligible for federal trademark registration and whether one party’s trademark is entitled to registration over another party’s trademark based upon priority of use and likelihood of consumer confusion.  The TTAB does not have the authority to award damages for trademark infringement or prevent the use of an infringing trademark in the marketplace.

USPTO Image 2In other words, the TTAB decides whether a party or which party is entitled to trademark registration and thus the trademark rights conferred by it.  However, the TTAB cannot stop a third party from infringing your trademark in the marketplace.

Before spending thousands and potentially hundreds of thousands of dollars on a dispute before the TTAB aimed at preventing the ownership of a registration, trademark owners confronted with the option of opposing or canceling a third party’s trademark registration at the TTAB should first consider whether the proper forum for the dispute is in court.  If the subject mark is infringing your trademark, likely to confuse consumers as to the source of the parties’ respective products, diluting your mark and/or tarnishing the reputation of your mark and brand, a court action may be the best option.

Furthermore, even if you receive a favorable decision at the TTAB, that decision may not be recognized in a later court action between the parties involving the same marks and products.  Accordingly, if you have a pending case or an option for a case at the TTAB, consider strategy early and whether the end game is to prevent the use of an infringing mark by the opposing party, receive payment for damages and possibly get attorneys’ fees or if you are only seeking a limiting agreement from the opposing party.

Simply preventing the registration of a third party’s mark may not be the result you need.  When the target mark is vulnerable to a trademark registration opposition or cancellation proceeding at the TTAB, one strategy is to file a complaint with the TTAB and simultaneously file a complaint in court.  Once the complaint is filed with the court, file a petition to suspend the case at the TTAB pending the outcome of the court action.  Another strategy is to file a proceeding at the TTAB and seek settlement whereby the opposing party agrees to discontinue the use of the infringing mark.  If settlement is not reached quickly, your next step is to consider whether to suspend the TTAB action and file a court action.

Before any action is taken in a trademark dispute, it is always best to know what you want before the guns are drawn, the merits of your case and your strategy.  Otherwise, you just might end up wasting your time, money and resources.

Protecting Trademarks in China: Avoid Being Sued in China for Using “Your” Trademarks

IMG_2012Unlike the United States, which is a “first to use” trademark system, many countries, including China, follow a “first to file” trademark system.  Meaning whoever files a Chinese trademark application first for a particular trademark and goods/services, which ultimately matures into a trademark registration, is considered the legal owner of the registered mark – even if that party had never used the mark in China (or elsewhere).  In most cases, unless your trademark is considered “famous” (and I mean “really really famous“), if someone files a Chinese trademark application for your mark and products first, you lose.     

Many cases of third parties registering a company’s trademark in China are the result of trademark pirates; those parties seeking to hold the trademarks of others for ransom.  Even worse, these pirates may even sue the rightful trademark owner and user for trademark infringement in China and seek millions of dollars in damages – simply because they filed a trademark application first.     

Not only do these pirates register the trademarks of others in English but they also register them in Chinese characters, since most people in China do not speak English.  For that reason, it is best practice to register brand names in China in both English and Chinese.  Failure to register trademarks in China can result in loss of rights, loss of market opportunity and/or many years of costly litigation (sometime 4-6+ years) over trademark rights. 

Even if brand owners do not sell their products in China, they should still secure Chinese trademark registrations for their marks if they manufacture products in China for export.  Under Chinese law, trademark pirates may record their registered marks with the Chinese customs authorities in an effort to seize your products at the border.  Once seized, the pirates request ransom in exchange for the release of your products. 

Trademark theft and piracy is an industry in China, as well as some other counties.  Not only should companies consider registering their trademarks in those countries in which they do business and/or conduct manufacturing, they should also reserve certain country domain names that correspond to those trademarks to keep them out the hands of Internet pirates (a/k/a domain name squatters).  

How Can We Help Brand Owners? 

  1. Audit your current global trademark portfolio for gaps in trademark protection
  2. Provide a list of “first to file” countries for review
  3. Provide guidance with respect to goods and services coverage
  4. For non-English speaking countries, such as China, provide Chinese versions of your trademarks (provided by English and Chinese speaking trademark specialists)
  5. Review your marks for any negative connotations in non-English speaking countries
  6. File global trademark applications to protect marks vulnerable to trademark piracy

Trademark FRUTTA DI VITA Confusingly Similar to Registered Trademark FRÜT A VIE Says U.S. Patent and Trademark Office: Put on Your “Judge Hat” and Opine

Another recent trademark decision rendered by the U.S. Trademark Trial and Appeal Board (the “Board”) has, again, highlighted the importance of trademark selection and the intricacies of trademark clearance and trademark infringement analysis.  

In that case, the trademark applicant sought registration of mark FRUTTA DI VITA for “cosmetics and cosmetic preparations; concealers; cosmetic facial blotting papers; cosmetic sun-protecting preparations; and cosmetic sun-tanning preparations.” 

The U.S. Patent and Trademark Office Examining Attorney refused registration of the mark FRUTTA DI VITA on the basis it is confusingly similar to the registered mark FRÜT A VIE for “cosmetic creams for skin care; cosmetic preparations for skin renewal; skin and body topical lotions, creams and oils for cosmetic use; wrinkle removing skin care preparations.” 

    VS.

When the Applicant appealed the refusal to register its mark, the Board affirmed the Examining Attorney’s rejection based primarily upon the following four trademark principles and findings: 

  1. The goods listed in the parties’ respective filings are identical or essentially identical. 
  2. Since there are no limitations set forth in the parties’ respective filings as to the channels of trade in which their goods travel (i.e., professional buyers vs. retail consumers), the goods are presumed to travel in all normal (thus overlapping) channels of trade.
  3. Buyers of the parties’ respective goods are presumed to be the same/overlapping. 

Applicant argued that the applied for mark is used exclusively for higher-priced anti-aging skin preparations and not for general cosmetics or general skin care preparations and the buyers for its goods are well-informed consumers, thus consumer confusion between the marks is unlikely.  Unfortunately for Applicant, however, the USPTO must compare the parties’ respective goods as identified in their trademark filings, which, in this case, were presumed to be identical or essentially identical cosmetic and skin care preparations and also presumed to travel in the same channels of trade to the same class of buyers. 

  1. The marks FRUTTA DI VITA and FRÜT A VIE are similar in terms of appearance and sound. 

During its analysis of the parties’ respective marks, the Board concluded that Applicant’s mark FRUTTA DI VITA translates into English as FRUIT OF LIFE, while the cited mark FRÜT A VIE has no direct English translation; thus the “doctrine of foreign equivalents” would not apply in the case. 

However, the Board held that the parties’ respective marks are sufficiently similar in terms of appearance and sound so as to cause a likelihood of consumer confusion – or trademark infringement.  The Board stated the following: 

  • “Thus, while in some respects, the marks differ in appearance, their basic structure (including first and last words beginning FRUT— and VI—, respectively) and their general appearance of foreignness are more likely to be recalled by consumers than the more detailed and specific differences between them.” 
  • “Finally, we find that the marks are also similar in their sound or pronunciation.” 

The Board correctly noted that the test for whether marks are likely to cause consumer confusion as to the source of goods and services is not based upon a side-by-side comparison of the marks, but rather based upon the recollection of marks by the average consumer.    

Two important trademark principles applied in this case are that (1) when the goods or services of the parties are identical or essentially identical, the marks of the parties need not be that close or identical to support a finding of likelihood of consumer confusion – or trademark infringement and (2) trademark infringement analysis with respect to the marks is not based upon whether there is another party using the same mark, but rather whether there is another party using a confusingly similar mark – one that would likely cause consumer confusion as to the source of the parties’ respective goods or services. 

One can certainly check the USPTO database to see if someone has already filed an application for a specific mark with a specific spelling.  However, one must also check the USPTO database for third-party marks that are confusingly similar to a proposed mark.  Also, since U.S. trademark rights are created based upon actual use in the marketplace and not registration, one must not only consider registered trademarks (state and federal) but also common law (unregistered) trademarks and even business names. 

When brand owners are selecting new brand names / trademarks (including logo designs), they should consider my rule of “The Four D’s of Trademark Selection.”    

Brand name selection does not have to be that difficult.  Proper consideration of brand names does take time and thought-provoking analysis, however.  Not considering the rule of the Four D’s could potentially prove fatal for a company’s new product launch and, as I have said before, could be the difference between brand success and failure.

With the Launch of Over 1000 New gTLDs Over the Next Year…Is it Time for Brand Owners to Panic?

As we all know, there are already a handful of generic top-level domain names (“gTLDs”) in existence, such as .COM, .CO, .BIZ, .NET, .ORG, .EDU and .XXX, as well as many country code domains, including .CN (China), .JP (Japan), .PL (Poland) and .EU (Europe).  As you may also know, Internet pirates (a/k/a domain name squatters) seek to plunder the trademarks of others by using them in domain names for monetary gain, including the siphoning of Internet traffic from brand owners’ own websites and holding them for ransom.  Many brand owners have dedicated significant time and expense over the past decade (and continue to do so) to defend against these pirates in an effort to control unauthorized use of their trademarks on the Internet, including use of those trademarks in domain names.  With the imminent launch of over 1000 new gTLDs over the next year (possibly 20 per week), those fights may have only been primers for what is about to come for some brand owners.  

As of today, there have been over 1,900 applications filed by third parties for new gTLDs, including .ACCOUNTANTS, .ART, .CONSTRUCTION, .ENGINEERING, .FURNITURE, .SALON, .TICKETS, .THEATER, .TIRES, and so on.  To see the full list, click here.  

The launch of these new gTLDs has been delayed for several years due to brand owners’ and trademark practitioners’ concerns of rampant trademark hijacking and domain name squatting – and the expense and time to defend against such activities.  In an effort to minimize those concerns, the Internet Corporation for Assigned Names and Numbers (“ICANN”) (the entity created to oversee and coordinate domain names) created, what is known as, the Trademark Clearing House (“TCH”).   

What is the Trademark Clearing House (“TCH”)? 

The TCH is a global trademark registry for brand owners to register their trademarks.  TCH providers will verify trademark rights and data and maintain a database with the verified trademark data. 

Two primary benefits of the TCH are that trademark owners that register with the TCH would receive priority with respect to reserving new gTLDs during sunrise periods and receive claims notifications of third parties seeking reservation of domain names that incorporate their trademarks.   

What Trademarks Are Eligible? 

Trademarks that (1) are nationally or regionally registered, (2) have been recognized and validated through a court or other judicial proceeding and (3) are protected by statute or treaty may be registered with the TCH.   

One important aspect of the TCH is that only exact matches of trademarks may be registered, near exact or phonetically equivalent marks (to protect against “typo squatting”) are not eligible for registration.  

What are the Costs for Registering Trademarks with the TCH?

The cost to record marks with the TCH depends upon how many years the reservation is for and how much an agent charges for the recordal.  For a one-year recordal, the registration fee charged by ICANN is $150 per trademark. 

What are Sunrise Periods? 

Sunrise periods will allow brand owners that have registered their trademarks with the TCH to register new gTLDs corresponding with their marks before reservation periods open to the general public.  The aim of sunrise periods is to allow brand owners to “pre-register” their domain names in an effort to keep them away from domain name squatters.    

If a trademark owner plans to register during a sunrise period, it must first submit proof that the subject mark is currently in use, which includes a signed declaration and a sample of how the mark is actually used. 

Should there be competing domain name requests during a sunrise period, ICAAN ultimately wins as the parties would need to “duke it out” at auction.  Highest bid wins.  

What are Claims Notification Periods? 

Trademark claims notification periods follow sunrise periods and run for at least 90 days.  Anyone seeking reservation of a domain name that incorporates a trademark owner’s mark that has been registered with the TCH will receive notification that the reservation request may violate third-party trademark rights.  If the party proceeds with the registration after such notification, a trademark owner would then receive notification that someone has sought registration of a domain name incorporating its mark.  

Once a trademark owner receives such notification it may decide whether to object to the reservation by utilizing the Uniform Rapid Suspension system, a feature of the new gTLDs system, or take other action. 

What Should Brand Owners Do? 

The first step for brand owners is to review the list of applied-for gTLDs and decide if there are any domain names of interest (at least those that correspond to their industry, i.e., Goodyear.tire). 

If a brand owner intends to reserve certain gTLDs corresponding to certain of their trademarks (i.e., for its actual use or as defensive registrations) it should register those trademarks with the TCH.  Those brand owners should then monitor for sunrise periods corresponding to the interested gTLDs to seek reservation of the subject domain name(s). 

Brand owners not planning to reserve domain names that correspond to the new gTLDs, likely need not file their trademarks with the TCH - although reserving top-tier marks now is probably a good idea in the event those plans change.   

If brand owners are only interested in monitoring third-party reservation of domain names that correspond to their trademarks, a better alternative to registering with the TCH is to order a domain name watch from a qualified service provider.  The domain name watch would monitor for any domain name reservations that not only include exact spellings of watched marks but also misspellings and phonetically similar marks.  A domain name watch is relatively inexpensive – only about $250 per year per trademark. 

Although there is much to consider, it is not time to panic.   

However, it is time to understand that there are pirates ready to plunder the trademarks of others with hopes of financial gain.  Although many trademark owners may have bigger fish to fry than worrying about Internet pirates and new gTLDs, brand owners should still take a moment to consider their strategy for defending against potential online attacks to their valuable treasures (a/k/a/ their trademarks and brands).   

Related Trademark Titan Blawg Posts: 

1.  Six Actions Brand Owners Can Take To Prepare For Potential Deluge Of New Generic Top Level Domain Names 

2Uniform Domain-Name Dispute-Resolution Policy (UDRP): To Catch a Cybersquatter  (Includes: Domain Name Squatting vs. Domain Name Speculation)    

3.  Study Suggests That Trademark Owners Need Not Worry About New gTLDs 

4.  Ten Essential Rules for Internet Brand Names