How to Quickly Do Your Own Initial Trademark Clearance Searches and More

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1 How to Quickly Do Your Own Initial Trademark Clearance Searches and More Presented to April 7, Kilpatrick Townsend

2 Panelist Introductions Elizabeth Regan is Vice President & Assistant General Counsel for Intellectual Property with Marriott International, Inc. As head of Marriott s IP Group, she is responsible for the company's intellectual property matters worldwide, including domestic and international brand and portfolio strategy and management; enforcement of intellectual property rights; and transactional matters related to intellectual property. She has been a speaker at programs offered by the International Trademark Association, the Association of Corporate Counsel, the American Bar Association, the D.C. Bar Association and others. In 2015, Elizabeth was named a Corporate IP Star by Managing Intellectual Property. David Mayberry is a partner with and team leader of Kilpatrick Townsend s nationally and internationally recognized Trademark and Copyright team. As lead trial counsel, David Mayberry has helped clients resolve intellectual property law claims at trial, in arbitration, through mediation and creative settlements outside the courtroom. He has complex litigation experience in trademark, copyright, patent, trade secret, franchise and antitrust cases. Mr. Mayberry also counsels clients on trademark and trade dress enforcement and protection issues. Mr. Mayberry has be recognized by Chambers USA: America's Leading Lawyers for Business for Intellectual Property: Trademark, Copyright & Trade Secrets, Super Lawyers magazine, Legal 500, and World Trademark Review Tracie Siddiqui is an associate with Kilpatrick Townsend s nationally and internationally recognized Trademark and Copyright team. She focuses her practice on trademark, copyright, sweepstakes and cybersquatting issues, including domestic and international trademark clearance and prosecution, enforcement and infringement litigation, and client counseling. Ms. Siddiqui has been recognized as a Washington, D.C. Rising Star in the area of Intellectual Property Law by Super Lawyers magazine. 2

3 Agenda Introduction to Trademark Law Sands, Taylor & Wood v. The Quaker Oats Co.: A Case Study Preliminary Search Overview & Tips Questions 3

4 Introduction to Trademark Law

5 What is a Trademark? A distinctive word, name or symbol for products or services offered by a particular company. 5

6 Trademarks Take Many Different Forms WORDS MARRIOTT SLOGANS Travel Brilliantly SYMBOLS SOUNDS SHAPES 6

7 What are Trademark Rights? The exclusive right to use a mark in a particular country in connection with a particular set of goods or services 7

8 Geographic Limitations No such thing as a global trademark Trademark laws vary from one country to another Trademark rights belong to the first to file for registration or the first to use -- depending on each jurisdiction s law. 8

9 Establishing Trademark Rights in the U.S. Federal Registration conveys nationwide rights. Without a registration, rights are territorial and based on use. The first to use a mark in a particular geographic area develops common law rights in that area. Seattle Miami 9

10 Goods and Services Limitations Registrations cover only the goods and services specifically listed Goods & services are categorized by class Some countries (e.g., China and Japan) also use sub-classes 10

11 What makes a strong mark? The Spectrum of Distinctiveness Generic Descriptive Suggestive Arbitrary Fanciful MORE DISTINCT 11

12 Why Conduct Trademark Clearance Searches? To minimize the risk of disputes and liability for trademark infringement To determine where the mark can be protected (registered) To determine whether the mark can be enforced against others 12

13 Why Conduct Trademark Clearance Searches? Gatorade/Thirst Aid: US$42 million in damages (reduced to $20.6 million) Goodyear/Big O Tires: US$19 million in damages(later reduced to $4.6 million) Pfizer/Trovan: US$143 million in damages, including $135 million punitive (awarded by jury - was later reversed) 13

14 Likelihood of Confusion For clearance, we must evaluate whether there is a likelihood of confusion between the marks at issue. In other words, whether consumers would be likely to be confused as to the source, origin or sponsorship of the parties products through their use of their marks Actual confusion? Other similar marks on similar goods? Similar? Marks Likelihood of Confusion? Careful buyers? Related Goods or Services? Similar trade channels? Bottom Line: no absolute rules, very factual case-by-case determination 14

15 Some Practical Considerations Where will the use appear? Is it easy to change? Is it expensive to change? Is there a regulatory aspect? Is this something you need to brand, or would a generic use be sufficient? 15

16 Sands, Taylor & Wood v. The Quaker Oats Co.: A Case Study

17 Why Trademark Clearance is Important: A Tale in 10 Myths 17

18 Myth #10: Descriptive Use is Always Fair Use Even if Thirst Aide were descriptive, Quaker could not prevail because it has used the term as a trademark in its ads. Descriptive Marks Are Different from Descriptive Use. And If You Think It Is Descriptive, You Better Be Right. 18

19 Myth #9: Only Identical Marks Can Infringe The fact that STW and its predecessors have not used the entire slogan THIRST-AID FIRST AID FOR YOUR THIRST since 1949 does not necessarily mean that the registration has been abandoned. Confusingly Similar Marks Can Infringe. 19

20 Myth #8: Only Use on Identical Goods Infringes We do not see a wide gulf between a trademark for beverage syrups and a trademark for beverages... Use on Related Goods Can Infringe. 20

21 Myth #7: If I Don t Find Use, They Have Abandoned It STW has manifested a serious intent to market (or license someone else to market) an isotonic beverage in direct competition with Gatorade under the THIRST- AID name. Attempts to License Can Constitute Use. 21

22 Myth #6: Different Channels of Trade Are Always Sufficient to Prevent Confusion [Although THIRST-AID syrup was only sold in the industrial market], the THIRST-AID mark was used in retail, in-store advertising and promotional materials provided to soda fountains that sold beverages made from THIRST-AID syrups. Channels of Trade Are Not Always As Limited As They Appear. 22

Myth #5: If You Don t Intend to Usurp Goodwill, it is Not Infringement A survey shows that consumers faced with an isotonic beverage marketed under the name Thirst Aid would

23 Myth #5: If You Don t Intend to Usurp Goodwill, it is Not Infringement A survey shows that consumers faced with an isotonic beverage marketed under the name Thirst Aid would be likely to think it was produced either by the manufacturer of Gatorade or by another manufacturer who was trading off Gatorade s good will. Beware of Reverse Confusion. 23

24 Myth #4: If You Use Your House Mark Too, That Prevents Confusion.it is precisely the strong association between Gatorade and Thirst Aid created by Quaker s ads that is likely to create confusion in this case. Use of a house mark can exacerbate a likelihood of confusion. 24

25 Myth #3: If Marketing Informs You About a Prior Use, It s OK an employee of Quaker s research and development division telephoned Lannin and informed him that Pet had previously test-marketed an isotonic beverage called THIRST-AID. Marketing s Awareness of Third-Party Uses is a Big Red Flag. 25

26 Myth #2: If You Don t Willfully Infringe, You Won t Have to Pay Monetary Damages A reasonably royalty would more accurately reflect both the extent of Quaker s unjust enrichment and the interest of STW that has been infringed. Judges Have Discretion to Award Damages Even Without a Finding of Willfulness. 26

27 Myth #1: If You Accidentally Infringe, You Can Always Resolve it Quickly and Easily 27

28 The Moral of the Story Eliminating risky marks at the preliminary stage will not only save on outside counsel fees, it can avoid headaches down the road. 28

29 Putting it All Together: Preliminary Knock Out Search Overview and Tips

30 Step 1: Evaluating the Mark Determine where the mark falls on the Spectrum of Distinctiveness: Generic Descriptive Suggestive Arbitrary Fanciful MORE DISTINCT 30

31 Step 1: Evaluating the Mark Interview the marketing team How did you come up with the name? What is the meaning or significance of the mark? Does it have any significance or meaning within the industry? Exactly what goods or services will be offered under the mark? Is there a planned design or logo? Do you know if the mark is being used by anyone else? Have you checked for similar names through Internet or other searching? Are you currently using the mark in this form or another similar form? If so, how? Who is the target audience? Will it be used externally or only internally? 31

32 Step 2: Conduct an Internet Search 32

33 Step 3: Conduct a PTO Search 33

34 Step 3: Conduct a PTO Search 34

35 Step 3: Conduct a PTO Search 35

36 Step 3: Conduct a PTO Search 36

37 Step 3: Conduct a PTO Search 37

38 Step 3: Conduct a PTO Search 38

39 Step 4: Evaluate Hits Review the hits from the Internet and PTO searches against the proposed mark. Actual confusion? Other similar marks on similar goods? Similar Marks? Likelihood of Confusion? Careful buyers? Related Goods or Services? Similar trade channels? 39

40 Tips and Reminders Lack of a trademark registration does not mean lack of rights. Geographically remote uses can grow to become infringing uses. Marketing might expand its use, but probably will not check back with you to conduct another search. When in doubt, knock it out. 40

41 Questions David Mayberry Kilpatrick Townsend Tracie Siddiqui Kilpatrick Townsend Elizabeth Regan Marriott International, Inc

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