Misuse of Trademarks by Distributors, Affiliates or Licensees Presented by:

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Philip Hood
8 years ago
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President, General Counsel and Secretary Provide

1 Misuse of Trademarks by Distributors, Affiliates or Licensees Presented by: Blake Bilstad Senior Vice President, General Counsel and Secretary Provide Commerce, Inc. and Lisa M. Martens Principal Fish & Richardson P.C.

2 It Started So Well... [Cutesy image] 2

3 It Started So Well... Naïve or non-existent licensing restrictions Key terms undefined Scope of license unclear Silent on IP rights [Some really egregious example here would be nice] 3

4 ...But Then Things Changed... Helpful Good-faith registration of related marks and domain names (e.g. proflowers.co.uk) Confused Hold-over Copying trademarks, text, graphics and images from website ( I thought since I m an affiliate I could do that. ) Continued Use after termination date Malicious Blatant infringement after termination Bad-faith registration of related marks and domain names (e.g. Kricket ) 4

5 Case Study: Provide-Commerce The problem: well-meaning licensees, trying to be helpful, went a little too far under their licenses. 5

6 Case Study: Provide-Commerce Authorized Provide affiliate copied images from one of Provide s websites. Affiliate agreement granted no such rights. 6

7 Case Study: Provide-Commerce Provide s affiliate agreement specifically addressed usage of Provide s copyrighted materials. 7

8 Case Study: Provide-Commerce 8

9 Case Study: Provide-Commerce Action: Fish & Richardson sent affiliate a soft cease and desist letter, explaining use of Provide s banner ads was not allowed under agreement and requesting immediate removal. Resolution: Confused Affiliate removed infringing banner ads and used authorized affiliate links. 9

allowed under agreement and requesting immediate removal.

10 Case Study: SataCom The problem: well-meaning licensees were unclear on what they could do under their licenses. 10

11 Case Study: SataCom SataCom licenses a foreign distributor to distribute its satellite products in the Middle East. Agreement grants the distributor the rights to use SataCom s trademarks. Distributor registers satacom-dubai.com. Distributor registers trademarks derivative of Satacom s trademarks. 11

Agreement grants the distributor the rights to use SataCom s trademarks.

12 Case Study: SataCom SataCom proposes a license for distributor s unauthorized use of SataCom s trademarks. SataCom contacts foreign counsel to investigate remedies available. SataCom exercises international trademark rights granted by the Paris Convention. 12

SataCom contacts foreign counsel to investigate remedies

13 Case Study: SataCom 13

14 Case Study: SataCom [Resolution of issue] 14

15 Case Study: Cricket The problem: unauthorized distributors blatantly infringed the trademark owner s rights. 15

16 Case Study: Cricket Cricket Communications sells cellular phones and services under its registered trademarks, but only through authorized dealers. GSM Cellular is an unauthorized retailer in Arizona selling Cricket products using Cricket s branded logos and displays. AFTER receiving a cease and desist letter to stop all use of CRICKET, GSM registers the trade names Kricket and Kricket Cellular. 16

GSM Cellular is an unauthorized retailer in Arizona selling Cricket products using Cricket s branded

17 Case Study: Cricket [Images of shameless trademark infringement from the Complaint] 17

18 Case Study: Cricket Cease and Desist letter went ignored. 18

19 Case Study: Cricket Then came the lawsuit. 19

20 Case Study: Cricket 20

21 Preventive Medicine Register everything Trademarks Copyright Company names Domain names 21

22 Preventive Medicine Advantages of federal registration Evidence of ownership Possibility of becoming incontestable after five years Protection against registration of similar marks Nationwide constructive notice and use Right to use Right to sue in federal court Basis for foreign registrations Right to block imports that infringe the mark 22

23 Preventive Medicine Anticipate licensee confusion Call out IP issues explicitly in your agreements Be consistent across licensee types Marketers Suppliers Resellers New Media Resellers (Groupon, Living Social) 23

24 Examples (Provide) 24

25 Enforcement Contact party directly (in writing) Cease and Desist order from outside counsel Negotiate phase-out, assignment Litigation PR Response 25

26 Questions? Lisa Martens (858)

LOJACK CORPORATION THIRD PARTY TRADEMARK GUIDELINES

LOJACK CORPORATION THIRD PARTY TRADEMARK GUIDELINES INTRODUCTION As a company, we are committed to protecting our trademarks and respecting the trademark rights of others. As part of this commitment, LoJack