Preparing Trademark Search Opinions

Transcription

1 Preparing Trademark Search Opinions Jonathan M. Gelchinsky Finnegan Henderson Farabow Garrett & Dunner, LLP 55 Cambridge Parkway Suite 700 Cambridge, MA

2 Preparing Trademark Search Opinions I. Attorney-Client Privilege Search opinions and communications relating to them are privileged and/or work product, and do not have to be produced, though they may need to be listed on a privilege log in a litigation or TTAB proceeding. However, it is possible that the privilege could be waived either inadvertently, or intentionally to defend against a claim of willful infringement (although that is rarely done). As a result, when writing the opinion, always approach it as though it will be discovered, and consider how what you write in the opinion could be perceived by others, including a court. Search reports for clearance purposes are generally discoverable in TTAB proceedings and federal court litigations and need to be produced. II. Drafting the Opinion A. Preliminary Points You should clearly convey the scope of the client s instructions, including the nature of the proposed use (i.e., what are the goods/services that were searched?). Also note if the client indicated that there will be any limitations on the proposed use. Identify any other relevant facts that affect the opinion, such as if the client has had some prior use of the same or a similar mark, or if there is any information on the channels of trade for the proposed goods and services. You should identify the sources that were searched and explain the scope and limitations of the search. For example, regarding the PTO (federal) search, note: the date of the latest filed applications as indicated in the search report, and point out that third-party applications may have been filed between that date and the date of the opinion that due to the Paris Convention, a foreign applicant could obtain an earlier effective filing date in the United States even though the mark will not be revealed by the U.S. search that abandoned marks can be revived for up to a year and therefore marks identified in the search as abandoned could subsequently be revived Also note any applicable limitations to the state, common law, and domain name searches. This information can be conveyed in a number of ways, such as by setting it out in the opinion itself, incorporating it by reference from the search report, or attaching a separate sheet to your opinion. 1

3 B. The Mechanics of the Opinion 1. Give the Client an Opinion It is important to clearly convey to your client whether the mark is available for both use and for registration (the opinion may not be the same for both), and to discuss any risks. For example, if clearing the proposed mark, you can say that the mark should be available for use and registration. You should avoid simply stating that use of the proposed mark will be risky without giving some conclusion one way or the other. Regardless of the language used, you should always discuss any risks that are relevant when you provide your full analysis. It is a good idea to include a short 1-2 sentence summary, separately set off at the beginning of your opinion, before you provide your full discussion and analysis. You should not predict the risk of receiving an objection, but rather the chances that the client will ultimately prevail if its use and/or registration is challenged by a third party. That said, you can discuss those third parties that you believe may be more likely to object to the client s use and/or registration of the proposed mark to condition the client to that possibility. It is a good idea to note relevant trends and patterns of third-party enforcement, which can be obtained from the search and your own follow-up investigations. For example, you might note if the owner of a particular mark of interest has been involved in numerous TTAB proceedings or has otherwise been litigious in the past with respect to its mark. Discuss any limitations, restrictions, or conditions that apply to your opinion. For example, you may determine that the mark is clear for use and/or registration only with certain conditions in place that will help avoid a likelihood of confusion, such as combining the proposed mark with a house mark or with a distinctive design element. You may advise the client, if they seek registration, to limit the description of goods in a certain manner or to keep the description very narrow. You may alternatively advise the client that the mark is clear to use, but not to register. Or you may advise the client to use the proposed term descriptively, and not as a trademark (see discussion below). 2. Use Clear and Careful Language Be careful how you describe and characterize third-party marks in the opinion. For example, you should not refer to third-party marks in the opinion as problematic if you are clearing the proposed mark. Instead, say that they are of interest. Also, avoid stating that particular third-party marks should not pose an obstacle or should not be an impediment, because those marks just might pose an obstacle or be an impediment (e.g., the party might send a demand letter, file an opposition, or initiate a lawsuit), although the client may ultimately overcome those obstacles or impediments. It is better to say that the third-party marks should not preclude the client s use or registration. Remember that the test for trademark infringement is likelihood of confusion, and not actual confusion. As a result, you should avoid stating that the client s mark shouldn t cause confusion with another mark. Instead, say that the proposed mark should not create a likelihood of confusion or that confusion is unlikely. Similarly, do not say that there is a low likelihood of confusion, which suggests that there still is some level of a likelihood of confusion. 2

4 When discussing third-party marks in your opinion, keep in mind all of the likelihood-ofconfusion factors although some may be more applicable than others. The most important factors tend to be the similarity of the marks, the similarity of the goods and services, and the strength of the mark. Other factors may not be as relevant to the issue of registration, but could be highly relevant to your opinion on whether the mark is available for use, such as actual confusion, channels of trade, the nature and cost of the goods, and sophistication of consumers. You should also consider whether the client s proposed mark is likely to cause dilution with a famous mark, and discuss that issue as necessary. Discuss the scope of protection that the proposed mark should be afforded. Consider both the degree of inherent distinctiveness (where the mark falls on the fanciful-arbitrarysuggestive-descriptive spectrum) as well as the marketplace strength (whether the mark appears to be diluted or part of a crowded field of similar or identical marks). The scope of protection discussion will serve to both set the client s expectations as to protectability and registrability, and also to distinguish the proposed mark from other third-party marks In some situations, the relevant third-party marks revealed by the search will be weak marks, either because they are inherently weak or are diluted on the register or in the marketplace. In those cases, do not say that the third-party mark is not very strong, which suggests that the mark still has some strength; instead refer to the mark s weakness. At the same time, don t attack the strength of your client s own mark unless it is necessary. If there are particular third-party registrations that you believe the PTO is likely to cite against the client s own application under Section 2(d), it is usually a good idea to condition the client to this possibility to set their expectations and avoid surprises, even if you think they will ultimately overcome the refusal. The approach you take in terms of setting out third-party marks of interest will vary from search to search, and will depend on the nature of the proposed mark, the goods and services, and the number of references you determine are worth bringing to the client s attention. That said, your client s preferences should ultimately dictate the type of approach you take. A few basic concepts may nevertheless be helpful, subject to careful consideration in each case: if the proposed mark is strong in terms of inherent distinctiveness, similar or identical third-party marks may be worth discussing even if the goods/services covered by those marks are unrelated to the client s proposed goods/services if the proposed mark consists of a common term, then marks that are highly similar or even identical may not need to be mentioned unless the goods/services are more closely related if numerous relevant references show that the mark is diluted or is a common term, it may be most efficient to set out the relevant marks in a narrative or summary form instead of providing detailed information regarding each one 3

5 3. Support the Opinion by Going Beyond the Search and Explain the Steps Taken In some cases it may be necessary to go beyond the search report itself in order to opine on certain third-party marks revealed by the search. For example you may: review third-party websites to determine if a third party s mark is in use and/or the nature of the use investigate third-party businesses to determine if a third party s mark is in use and/or the nature of the use review the PTO file history for the third party s trademark application to determine if the third party took any positions during the prosecution of its own application that could be relevant to the clearance of your client s mark (e.g., admission of a narrow scope of protection or arguments distinguishing it from other similar marks) review materials regarding TTAB and litigation proceedings brought by the third party to assess how litigious it has been in the past You should clearly and completely explain the steps you took and the results of your investigations. 4. Convey Any Issues With Protectability and Condition the Client to the Possibility that an Application may be Refused Registration If you believe that the client s mark may be deemed merely descriptive for the proposed goods or services, primarily geographically descriptive, or primarily merely a surname, it is important to convey to the client that the mark may not be immediately protectable or registrable on the Principal Register. You should also consider explaining: the differences between the Principal and Supplemental registers the possibility that third parties could start using the mark before the client is able to establish secondary meaning, such that the client s mark may never be able to acquire secondary meaning that it often takes years of use and significant advertising and sales in order to establish secondary meaning that even if the client establishes secondary meaning in its mark, third parties will still be able to use the term descriptively that if the client is looking for a mark that is clearly and immediately protectable and registrable, they might consider choosing a different mark You might encounter a situation where you believe that the client s proposed mark is merely descriptive and unprotectable, but there is some uncertainty as to whether a third party owns protectable rights in the mark (i.e., by having established secondary meaning). In such a case, to put the client in the best possible position to raise a descriptive fair-use defense if it uses the term and is challenged, you may advise the client to: 4

6 not use any trademark symbols or notices not include the term in any trademark legends not file a trademark application or if an application is filed, disclaim the descriptive term use the term with text emphasizing the descriptive nature of the term Jonathan Gelchinsky is a partner in the Cambridge, Massachusetts office of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. He handles trademark litigation, domestic and international prosecution and disputes, clearance, counseling, licensing, and proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. He also assists clients with the protection, enforcement, and licensing of copyrights. Jon has particular expertise in Internet-related trademark issues including domain name disputes, has handled dozens of complaints under the UDRP, and has been involved in numerous federal court lawsuits and foreign litigations involving domain names. Jon has represented a wide range of clients in a variety of industries, including consumer products, medical devices, pharmaceuticals, computer software and hardware, online media, telecommunications, publishing, education, motorcycles, and heavy machinery. Jon is the editor-in-chief of Finnegan s monthly trademark newsletter, Incontestable. 5