TRADEMARKS AND FTC CONGRESS. Registered as Patent Attorney before USPTO. Payam Moradian. Admitted only to NY Bar

Transcription

1 1 TRADEMARKS AND FTC REGULATION; 4TH WORLD AYURVEDA CONGRESS BANGALORE, INDIA Payam Moradian Registered as Patent Attorney before USPTO Admitted only to NY Bar

2 & FTC Regulations 2 India has a long tradition of medicine and has many things to offer to the world. It is very exciting for me to be in India and I am grateful to have this opportunity to speak to you and contribute to the growth of Indian medicinal industry. I want to thank the Indian government, Pharmexcil, Mr. Murali Krishna and Dr. P.V. Appaji for this opportunity. I ask you not to discuss confidential Information about your business during this presentation as we do not have an attorney-client relationship.

3 3 Trademarks identifies the source of a good. A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. Service Mark, Certification Mark, and Collective Marks.

4 4 Trademark Rights (in the US): From use, even without registration: Common law right From Registration before a patent office. It is possible that a common law user can have a superior right to a registered user. Common law rights may be limited to the geographic area where the mark is used. Countries differ in how they approach common law rights.

5 5 Common law rights create a search problem Searching for registered and pending trademarks at USPTO will not cover common law rights. Searching agencies provide a full search report. Thompson charges $625 for the service. W hen choosing a trademark, it is recommended that you: Search USPTO registrations and pending applications. Search the trademark in a search engine like Google. Search the trademark on internet retail stores, like Amazon. Search in a specialty retail store website: For a toy, search ToyRus.com. If the informal searches give a good indication, a full search report can be ordered.

6 6 What are the benefits of US federal trademark registration? 1. Constructive notice nationwide of the trademark owner's claim. 2. Evidence of ownership of the trademark. 3. Jurisdiction of federal courts may be invoked. 4. Registration can be used as a basis for obtaining registration in foreign countries. 5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

7 7 The two symbols associated with U.S. trademarks and represent the status of a mark and accordingly its level of protection. While can be used with any common law usage of a mark, may only be used by the owner of a mark following registration with the relevant national authority, such as USPTO. SM for service Marks. Use may differ depending on the country.

8 8 Different options in choosing a trademark Trademark words with no design. Trademark with a a design. Trademark with a color. The more distinguishing features, the easier to obtain a The more distinguishing features, the easier to obtain a trademark, but harder to infringe.

9 9 Five different ways to file a trademark in the US: Based on an actual use. Based on a good faith intention to use. Within 6 months of filing a foreign trademark application. Based on foreign registration. An international Application (Madrid Protocol). Many countries do not have the use requirement of US.

10 10 International Application based on Madrid Protocol: W hile an International Registration may be issued, it remains the right of each country to determine whether or not protection for a mark may be granted. To file an international application through the USPTO, an applicant must have a U.S. application, called a "basic application" or a U.S. registration, called a "basic registration." Any trademark owner with an application filed in or a registration issued by the USPTO and who is a national of, has a domicile in, or has a real and effective industrial or commercial establishment in the United States can submit an international application through the USPTO. Advantage: File a single application. Disadvantage: During the first 5 years of the life of the international registration, if the basic application or registration is refused, withdrawn, cancelled or restricted, in whole or in part, then the international registration will be canceled.

11 11 Need specimen to show a use: A specimen is a real-world example of how the mark is actually used on the goods or in the offer of services. Labels, tags, or containers for the goods are considered to be acceptable specimens of use for a trademark. For a service mark, specimens may be advertising such as magazine advertisements or brochures. Specimens are not generally required for applications based on a foreign application or registration. There may be a benefit to first file an application in India and use that to register in the US.

12 12 Need to provide a drawing of a mark if registering more than just words: The "drawing" is a representation of the mark applicant seeks to register. In an application based on actual use, the drawing must show the mark as it is actually used, i.e., as shown by the specimen. In the case of an application based on a bona fide intention to use, the drawing must show the mark as the applicant intends to use it. In an application based on on a foreign a application or foreign foreign registration, the drawing must depict the mark as it appears or will appear on the foreign registration.

13 13 Different types of Marks Generic. acetaminophen Cannot Trademark Descriptive. Suggestive. Arbitrary and fanciful: Kodak MALE-P.A.P. TEST held merely descriptive of clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer. THE BEST BEER IN IN AMERICA for beer for beer and ale and held ale to held be "so to highly be "so laudatory highly laud and descriptive of the qualities of [applicant's] product that the slogan does not and could not function as a trademark to distinguish Boston Beer's goods and serve as a indication of origin. Can overcome descriptive rejection by showing secondary meaning. The crux of the secondary meaning doctrine is that the mark comes to identify not only the goods but the source of those goods. To establish secondary meaning, it must be shown that the primary significance of the term in the minds of the consuming public is not the product but the producer.

14 14 Likelihood of Confusion The applicant s mark, as used on or in connection with the specified goods or services, so resembles a registered mark as to be likely to cause confusion. The issue of likelihood of confusion typically revolves around the similarity or dissimilarity of the marks and the relatedness of the goods or services. The goods or services do not have to be identical.

15 15 Compare to labels for pharmaceuticals. Using another company s trademark for a compare to label can be fair use of the trademark but have to be careful. The Fair use may not extend to using the Mark s font, style or making the Mark more prominent than your own trademark on the product. Compare to label may make it easier to prove patent Compare to label may make it easier to prove patent infringement.

16 FTC REGULATION 16 The FTC has primary responsibility for advertising and FDA has primary responsibility for for labeling. Review FTC (Federal Trade Commission) websites on dietary supplements before advertising and making therapeutic claims. guide-industry Example 5: An advertisement for a multi-vitamin/mineral supplement claims that the product can eliminate a specific mineral deficiency that results in feelings of fatigue. In fact, less than 2% of the general population to which the ad is targeted suffers from this deficiency. The advertiser should disclose this fact so that consumers will understand that only the small percentage of people who suffer from the actual mineral deficiency are likely to experience any any reduction in fatigue in fatigue from from using using the product. the

17 FTC REGULATION 17 In addition to conveying product claims clearly and accurately, marketers need to verify that there is is adequate support for their claims. Under FTC law, before disseminating an ad, advertisers must have a reasonable basis for all express and implied product claims. The FTC typically requires claims about the efficacy or safety of dietary supplements to be supported with "competent and reliable scientific evidence," defined in FTC cases as "tests, analyses, research, studies, or other evidence based on the expertise of professionals in in the the relevant area, area, that that have have been been conducted conducte and evaluated in an objective manner by persons qualified to do so, using procedures generally accepted in the profession to yield accurate and reliable results."

18 FTC REGULATION 18 the FTC and FDA Rules may limit the type of therapeutic claims that you can make depending on a product: "stimulate," "maintain," "support," "regulate," or "promote." "diagnose," "treat," "prevent," "cure," or "mitigate.

19 FTC REGULATION 19 According to the FTC, a claim is too good to be true (RED FLAG) if it says the product will... Cause weight loss of two pounds or more a week: for a month or more without dieting or exercise Cause substantial weight loss no matter what or how much the consumer eats Cause permanent weight loss (even when the consumer stops using product) Block the absorption of fat or calories to enable consumers to lose substantial weight Safely enable consumers to lose more than three pounds per week for more tha four weeks Cause substantial weight loss for all users Cause substantial weight loss by wearing it it on on the body or or rubbing it it into into the the skin skin

20 & FTC Regulation 20 Payam Moradian is a patent attorney registered before the US Patent and Trademark Office. He has nine years of experience at a large New York Intellectual Property firm and currently has his own practice with offices in California and New York. He is admitted only to the NY Bar and the U.S. Patent Bar. Best way to contact him is at p@moradianlaw.com or CA Office: Eastborne Ave, #302, Los Angeles CA, Phone: NY Office: #2 Channel Dr., Suite 104, Port Washington, NY Phone: This presentation is a simplified overview and should not be relied on for legal advice.