Author: Charles H. Knull

Charles H. Knull is an intellectual property lawyer with over 35 years of experience. He is a member of the N.Y. and D.C. bars. Knull P.C. is a member of the International Trademark Association (INTA).

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Trademark SCAM ALERTS

By Chuck Knull

Trademark Scam Alert
Trademark Scam Alert

Scam artists are once again on the prowl to clip trademark owners who like to pay bills for useless services or who overreact to letters and emails telling them that their trademarks are in jeopardy.  We have already received a bunch of inquiries from out clients about letters and emails they have received that either offer some extra service regarding their trademarks or imply that we, as their trademark attorneys, have missed deadlines that will cause the loss of the trademarks.

When we file trademarks for our clients, the filing information is publicly available at the U.S Patent and Trademark Office.  This means that our name and address is listed as Attorney of Record and the name and address of the trademark owner is also available.

Legitimate concerns know to contact the attorney of record about the given trademark. People with illegitimate thoughts go to the name and address listed as the trademark owner. These people create official-sounding companies and send out official-looking communications intending to cause alarm.

The kinds of communications you might receive relating to so-called extra services are things like publishing your trademarks in a book, at a charge over $1000 per three month period. (This is supposed to “add” protection to the trademarks by making them publicly available.) Another offer we have seen is a  service is to register domain names that include trademarks in various foreign countries, where, according to the offer, some local company is “just about” to take out these domain names and, by good fortune, the writer of the offer has discovered this is about to happen and put a hold on the domains until the fortunate trademark owner has the opportunity to send him a couple thousand dollars to register them.

Other offers come from so-called trademark service companies who will renew your trademarks, respond to office actions on your pending trademark applications, and the like. The prices for these proposed services are generally higher than what we charge per our fee schedule

[we would be pleased to provide you with the current fee schedule on request], and from what we have learned from reports of unfortunates who have used such services, the services provided are probably going to kill the trademark in question, rather than helping them.

We have even seen offers from a company that is sending out notices to trademark owners saying that not only have their trademarks been cancelled but also that someone else has jumped in and taken the marks (sort of a variation on the domain name scam mentioned above.)

You will not get what you think you are paying for. The offers that we have has reviewed are either worthless, such as the publication in the book noted above, which would have absolutely no effect upon the validity or strength of the trademark, or useless, such as the taking out of domain names in a foreign nation where one does no business, or counterproductive, or having a person unskilled in trademark law make filings at the USPTO.

If you receive any query regarding your trademarks that looks official but is directed to you rather than your trademark counsel, please assume it is a scam and send it on to your counsel.

14 Trademark Scams Uncovered

TM Collection – “International Register of Trademarks” – this one is a print version out of Hungary, but basically ths same scam.

TM Edition – “International Catalogue of Trademarks” – TM Collection by another name.

Patent Trademark Register – another “Registration of International Patents and Trademarks” but out of Austria.

Register of International Patents and Trademarks – another “Register of International Patents and Trademarks” but from Slovak Republic.

Trademark Renewal Service – “Trademark Cancellation Advisory” from a private company in D.C.

Trademark Safeguard – Trademark Monitoring Service – Order form for a monitoring service in NYC, “THE US PATENT AND TRADEMARK OFFICE HAS ALLOWED CONFUSINGLY SIMILAR NAMES TO BE REGISTERED.”

Intellectual Property Agency Ltd. – The British version of the renewal reminder.

As always, if you get something and you aren’t sure whether it is official USPTO correspondence or not, feel free to contact us and we will take a look.

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What Good is a Trademark Registration on the Supplemental Register?

By Chuck Knull

There are two “registers” for federal trademarks, the Principal Register and the Supplemental Register.  The Principal Register is what most everyone shoots for when they apply for a trademark registration.  A registration on the Principal Register has more substance–It carries an immediate presumption that the trademark is distinctive as used on the goods or services covered by the registration.   Presumptions are good things when you go to enforce your trademark.

Some trademarks, however, are too descriptive to be allowed registration on the Principal Register.  In other words, the marks describe elements of the goods or services covered, without being the only way to describe such goods or services.  For example, “Cooperstown Wine and Cheese Shop” could be a descriptive trademark for a wine and cheese store in Cooperstown, New York (if New York law permitted wine and cheese to be sold in the same store, which, alas, it does not).  Descriptive trademarks can still be registered and this is where the Supplemental Register.

A descriptive trademark is not going to make the Principal Register without evidence that it has acquired distinctiveness over time. And it is a long time–five years.  But a descriptive trademark can be applied for on the Supplemental Register, be used with the ® and, after being used for five years, can be subject to a new application on the Principal Register accompanied by a showing of use and recognition by the public in connection with the trademark.

In the meantime, nobody else can register the same mark.

While any trademark lawyer will tell his or her clients to adopt trademarks that are already distinctive, by using fanciful and suggestive terms in them, a business that is bent on using a mark that clearly conveys its goods or services to potential customers still can obtain trademark protection.  It will take years and the costs of filing two applications to reach the best level of protection, but don’t underestimate the value of using the ® and blocking others in the meantime.

When in doubt about whether something is descriptive or merely suggestive (a distinction only a trademark attorney could love), it makes sense to go ahead with the trademark filing, see if you can convince the Examiner it should go on the Principal Register, and, if not, take the Supplemental Register.  Why?  If for no other reason than you would hate to see someone show up with a similar mark later, block your future registration, and maybe even get it on the Primary Register because they were more bold in their filing strategy.

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What is a Design Patent?

By <a href="http://www.knullpc.com/attorneys/Charles Knull

The main category of patents is Utility Patents which protect a new and useful invention. Light bulbs, car engines, and smart phone electronics are things with specific functions that work better than whatever they are replacing. These are protected by Utility Patents

There is another domain of patent law…design.

Design Patents are a relative backwater of patent law. But they are also a unique opportunity to get “Patented” status for a lot less money than a Utility Patent.

What is a Design Patent? It is a patent that is granted on a unique ornamental design for a product or package. In many ways, it is hybrid form of Intellectual Property with aspects of patent, copyright, and even a touch of trademark (due to its interaction with trade dress). They are applied for and examined like patents. And, the result is a real patent with an issue date and patent number (design patent numbers are generally 6 digits preceded by a “D”, like D678,015).

Design Patents are much simpler than a Utility Patent. They consist of only drawings, a sentence describing what each of the drawings is, and a single claim that just references what is shown in the drawing.

There really isn’t a lot for a patent attorney to do other than make sure the drawings and other information in the application meet all of the Patent Office’s formal requirements. The filing fees are cheaper too and expensive negotiations with the Patent Examiner are almost unheard of. Cheap (relatively) and easy.

The scope of protection in a Design Patent is limited. It keeps someone from knocking off the novel elements that make up a product’s look, but that’s it. It doesn’t protect the function at all. And even the aesthetic design protection is really narrow. It is slightly more expansive than exact copying, but not by a lot.

If a Utility Patent is possible for a new product, then a Utility Patent is best. Even a narrow Utility Patent tends to provide more protection and get more respect from competitors than a Design Patent.

But in many product areas and with many business models, aesthetics really are a distinguishing aspect of the new product and having strong protection against direct knock-offs is appealing. A Design Patent can work wonders, and at a fraction of the cost of Utility Patents.

WARNING: “inventor assistance programs” and similar businesses that claim they will help you patent and sell your invention often use Design Patents and Provisional Patents to make it seem like they are patenting your invention for much less money than patent attorneys charge. As you can see from the article above, a Design Patent is not at all equivalent to a Utility Patent. If it sounds too good to be true, it probably is.

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Product Configuration Trademarks

Did you know that in addition to trademarks on names, words, and logos, U.S. law allows you to trademark product designs? Trademarks identify and distinguish the source of goods – often through brand names, like “Coca-Cola” and “Coke,” or symbols, like the cursive red and white Coca-Cola logo. Those trademarks protect the Coca-Cola Company from counterfeiters. But the company also has registered trademarks on its distinctive glass bottle. Product configuration trademarks potentially allow protection not only of brand names but also packaging and product design itself.

There are several key considerations when applying for a product configuration trademark. (These considerations are also important to any unfair competition claim brought against another similar product configuration.)

First, to be considered for registration, products configuration marks must have “acquired distinctiveness.” The Supreme Court decided in 2000 that product designs cannot be, as a matter of law, “inherently distinctive.” In somewhat circular fashion, to be grant a product design trademark, the manufacturer must demonstrate that consumers perceive the design to be a trademark – that is, something that identifies and distinguishes the source of the good. The evidence required to establish acquired distinctiveness depends on the mark and its use. At the minimum, for a mark to have acquired distinctiveness, it must have at least 5 continuous years of substantially exclusive use.

Second, the design mark cannot be functional. In order for trademark protections to apply, the product design must provide no real utilitarian advantage to the consumer, and must be one of many equally feasible, efficient, and competitive designs. The reasoning behind this is that patents already protect those sorts of utilitarian features (if they can be protected). For trademark law to protect those features, even after the patents expired (or never were possible), would be harmful to competition. (Even advertising a clear design feature—knobby glass bottles–as having a functional benefit– i.e., a non-slip grip – can compromise a trademark application or claim of protection.)

Recently, the Trademark Trial and Appeals Board (TTAB) of the USPTO affirmed a denial of a product configuration trademark to National Presto Industries (Presto), a manufacturer of electric skillets. Presto skillets have a swooping, curved leg/handle design.

The evidence the company introduced included the date when the company began selling products with the leg/handle design (more than 10 years prior), sales figures (more than $65M), advertising expenditures (more than $5M), and sample advertising (showing with design). In denying Presto’s trademark application, the Board noted that the sales and advertising figures were not insubstantial, but noted that a high volume of sales did not require a finding of acquired distinctiveness.

What the Board was looking for was a “nexus that would tie together the use of the design and the public’s perception of the design.” While not explicitly requiring it, the Board explained that evidence of “look-for” promotional efforts would be particularly helpful in determining whether the public uses the design as a mark.

These legal requirements of acquired distinctiveness and non-functionality are crucial. The USPTO could require evidence linking the product’s design to public perception. Product configuration trademarks, while they may be helpful in discouraging competitors from marketing similar looking products, are, thus, a tricky area of law.

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Taking photos off the internet can be costly

by Charles H. Knull

In the early days of the internet, many people believed that “everything on the internet is free to take and copy.” Those people often ended in court as defendants in trademark and copyright infringement cases. The belief that intellectual property laws were somehow suspended on the web was dispelled, Of course, there is still plenty of “borrowing” that happens because it is so easy to cut and paste text and to “right click” on a photograph and then use the text or photograph on one’s own project or website.

Beware the Robots! For a good number of years, copyright and trademark owners discovered web infringements by happenstance. Some big guys did employ people to constantly search the web for ripped-off materials. Then these people were replaced by Robot programs that scan huge numbers of web pages and can identify infringing graphic images based upon the images which are entered into the Robot databases. Most photos put on the web by professionals contain encoded ID information, but the smarty pants who figures how to delete this information is no longer safe from the Robots.

Once the Robot finds copying and alerts its human, the copier will find a notice in an email or mail as to the penalties for copyright infringement, and, usually, an offer of settlement that will be (a) much higher than what the copied would have to pay for a license had it been done the right way and (b) enough less than hiring a lawyer to defend a (losing) copyright infringement law suit to really make the settlement a bargain.

While there may be times when a user thinks that the allegation of infringement is incorrect, in my experience in asking for verification of the ownership of the photo in question and its copyright registration status, the copying proof and potential liability generally exists.

Unfortunately, some of the websites purportedly offering licenses for use of photos do not have the right to license the photos, but have “right clicked” them from legitimate sites. If the license fees seem like a real deal, then beware of the site offering them. You may still hear from the Robots.

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Trademark Opposition 101

By Charles H. Knull

What is an opposition or cancellation proceeding and what does it mean for your trademark strategy?

Opposition and cancellation proceedings are administrative trials held within the Trademark Trial and Appeal Board, which is a reviewing arm of the U.S. Patent and Trademark Office.  They are one of the ways that disputes between trademark owners can be resolved during the process of registering a U.S. trademark.

An opposition is an action brought against a “published application” by someone who doesn’t want the trademark to register (generally someone with a similar trademark).  When an application for trademark registration is filed, not only is the application reviewed by a Trademark Examiner at the USPTO, but also, if the application is approved, it is published in an issue of the weekly USPTO Official Gazette. Once published, anybody can file objections within 30 days.  Those objections can trigger an opposition proceeding.

A cancellation Proceeding is like an opposition, but it is brought against a Registered Trademark.  For example, sometimes, an applicant will find a registration blocking its application which, upon examination, is determined to be abandoned. The only way to clear the way is to file a cancellation and get the TTAB to cancel the abandoned registration.

These actions are a stripped down trial before the TTAB as judge (no jury), though many times they are handled entirely on paper without an actual oral argument in a courtroom.  Once a Notice of Opposition or Petition to Cancel is filed by the Opposer or the Petitioner (to Cancel), the TTAB issues an Order that establishes the schedule for the proceeding.  Similar to court cases, the dates set are rigid unless the parties can agree to reset them and the TTAB approves.  Generally, the only way to suspend or reset dates is to show legitimate mutual attempts are being made to settle the case without further litigation.

Filing either proceeding involves careful preliminary consideration of success. A rash filing can backfire and even result in a counter-lawsuit in Federal Court for trademark infringement.

Filing a proceeding, however, is much less expensive than going to Federal Court.  But, if filing  does not result in default, or suspension and settlement talks (a good proportion of them do), after about two months, legal fees and disbursements will mount up quickly as the dates set in the Order require various documents to be drafted and filed and for discovery to take place.   While these costs are much less than litigating in court, the costs must be considered from the initial decision.

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Understanding the Scope of Your Trademark

By Chuck Knull

Many laymen, and too many lawyers, confuse trademark rights with copyright (and patent rights).

Trademark law, which at its roots is a law intended to protect consumers from making purchases of products which are not what they intended to buy, provides a right for a trademark’s user to keep others away from its mark for similar goods or services. But in no sense is a trademark’s user the “owner” of the term, slogan, or logo which embodies the trademark. On the other hand, a copyright or patent give its owner a bundle of rights that only the owner can exercise.

From time to time, law suits are brought for trademark infringement that are a source of puzzlement and curiosity to trademark lawyers.   There are two recent examples of such relating Upstate New York businesses.

One of the law suits was brought by Dov Seidman, an author and lecturer on the subject of corporate responsibility and the owner of various trademark registrations for the term HOW, against Chobani LLC, the upstate maker of Greek yogurt products. Chobani recently began to use the term “How Matters” in its advertising, relating that term to how it makes its products in an environmental, “corporately responsible” manner. Mr. Seidman objected and then filed suit in Manhattan federal court.

The other law suit involves a loss by a Cooperstown company called Legends Are Forever, owner of a trademark registration for LEGENDS ARE FOREVER that includes clothing, against the shoe and apparel maker Nike.

Whether or not trademark infringement is to be found is based on whether or not there is “likelihood of confusion” by consumers between the trademark used by one side and the trademark used by the other. The cases generally are brought in federal court and determination of likelihood of confusion is based on the evidence presented. The courts have sets of “likelihood of confusion” factors that must be considered. In New York, these are called the Polaroid factors after the 1961 case of Polaroid Corp. v. Polarad Elecs. Corp.

The factors are:

(1) the strength of the mark,

(2) the similarity of the two marks,

(3) the proximity of the products,

(4) actual confusion,

(5) the likelihood of plaintiff’s bridging the gap,

(6) defendant’s good faith in adopting the mark,

(7) the quality of defendant’s products, and

(8) the sophistication of the consumers.

As you can imagine, each one of these factors have a body of case law and analysis helping to define what makes a strong mark, levels of similarity, proximity in terms of marketing and distribution channels, and all of the other factors.

In the LEGENDS ARE FOREVER case, the Court threw the case out because the plaintiff failed to prove one of the basic necessities–USE.

While the plaintiff had the trademark for clothing, it could only show in evidence that Nike had made up a few sample shirts with the trademark on them along with samples with other slogans. These shirts were not sold by Nike. Hence, there could be no confusion where there were not products for consumers to confuse. As an aside, had Nike actually marketed the shirts, some of the other factors, including the fact that the trademark is a slogan (weak) and the presence of other words on the samples that were found could still have resulted in a finding of no likelihood of confusion.

In the HOW case, which is in its early stages, Seidman’s trademark registrations relate to his use of HOW in marketing books and services to executives managing big companies. Chobani’s use of “How Matters” is directed at marketing yogurt to yogurt consumers. Thus, while it remains to be seen what evidence each side might offer, the possibility that an executive (even a person who buys yogurt) is going to purchase yogurt when intending to purchase Mr. Seidman’s books or services seems quite far-fetched. The fact that “How” is a common word, moreover, means that it probably can only be proved to be a weak trademark and is unlikely to get very broad protection. We shall see.

But both of these cases seem to stem from a misunderstanding or at least excessive enthusiasm about the scope of trademark protection. It is not about “owning” a word or phrase. It is only about preventing consumer confusion (and sometimes other abuses of the trademark owner’s goodwill).

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Getting a Trademark Step-by-Step

By Chuck Knull

  1. Select a trademark for your product or service. Be prepared by having more than one mark that you like. A mark that is coined is a much stronger mark than one that describes. There is a lot that goes into selecting a good mark.
  2. Knock Out search for similar trademarks.  Trademark law protects against “confusingly similar” marks. So if you have selected CLEANE as your mark for soap, if there is a mark KLEAN or CLEAN on the market, you would be infringing if you use CLEANE. We perform “knock out” searches by checking the records at the U.S. Patent and Trademark Office.  It takes some time and we have a flat fee charge of $400 for such a search.  Such a search should tell if there is no exact match for the mark on file at the USPTO, but the USPTO database has its flaws, and one cannot even be sure about exact matches. A “knock out” search can be supplemented by searching on the internet, looking in stores, and attending trade shows.  Often, if a mark has been in use for a while, and nobody has objected, a “knock out” offers some assurance that applying for the mark will not cause big trouble.
  3. Professional search and opinion.  If the mark(s) look clear after your knock out search, and there is a clear need to be absolutely sure of its viability, we can order a full common law, federal and state search report, to review that report, and to render an legal opinion on the use and registration of the mark. This process will cost about $1500-$2,500 per mark. However, having this search and an opinion of counsel before adopting a trademark is the only evidence that can be used to show that adoption of a trademark was made in good faith. Not having evidence of adoption in good faith is willful infringement, also known as “betting your company.”
  4. The application. Applications may be based on “use in commerce” if the mark is being used on the product or in offering the service already. Or it can be “intention to use” where the product or service is in development. An intention to use application will cost more from the beginning, but it may be worth it for the reservation of the mark. An “in use” application costs $500 flat fee for its preparation and filing, plus at least $250 for the US government filing fee. The application is only step one.
  5. Wait for word from the Trademark Office. Two or three months after application filing, an Examiner from the Trademark Office will probably write a letter called an Office Action that asks questions about the trademark. There may be technical issues to resolve, such as whether the mark means anything in a foreign language, an unsatisfactory drawing or other submission.  The Examiner may also cite existing trademarks as blocking the trademark. A response to an Office Action is due within 6 months. Responses to Office Actions take time and research.  We can respond to some office actions in less than half an hour (about $150), but others may take a great deal more time ($600-750).  It is impossible to predict what an Examiner may see as flaws in an application; sometimes applications we think will be difficult breeze through, and others are problematic.  Examiners look at applications differently and often are wrong, but correcting their view takes time and research.
  6. Publication. After the Office Action is responded to satisfactorily, the application should move on to be published in the Official Gazette of the USPTO, at which time others have the right to voice objection by filing a Notice of Opposition and beginning an administrative proceeding to prevent the mark from registering or receiving its Notice of Allowance.
  7. U.S. Trademark Registration. If no one opposes your trademark, it should issue and the Trademark Office will mail us a registration certificate, which we will docket and send to you.
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Protecting Beer Brands: A Trademark Strategy for Brewers

By Chuck Knull

I have spent a great deal of time as a lawyer helping brewers keep their brands from encroachers.  There are numerous ways that the brand names and trade dress of one beer can cross over into the territory of another beer brand.  As a result, a bartender in a dimly lit bar may pick the wrong bottle out of the cooler for a patron, or a soused patron might slur out an order one brand when intending another. Things like this have plagued the larger brewers for ages. Hence, specially colored and shaped bottles, and distinctive cans are often used by them.

Add to this the confusion of restaurants and pubs, which may have names close to the names of beers,  serving their own mini-brews and the problem gets bigger.  Now, with a multitude of local breweries growing and expanding in the U.S., the possibility is growing of one brewery’s “Red Ale” looking and sounding a lot like the “Red Ale” from another brewery that used to have a territory far enough away to make no difference. As we have reviewed the nation we have noted that a lot of growing local breweries need to step up the level of protection for their brands.  Otherwise, they may face expensive and uncertain litigation in the future.

I have written about the problem of relying on the TTB Certificate of Label Approval. A COLA IS NOT BRAND PROTECTION. My discussion is intended to offer a roadmap to actual brand protection using the Federal Lanham Trademark Act and related legislation to obtain concrete protection. The primary methods of obtaining protection for your brands must, of course, depend on individual budgets, but a growing brewer must not stint on brand protection or it will very possibly run into boundaries that it will not be able to cross over.

The aim of any brewer of beer should be to make sure that when a customer orders its beer, it gets its beer. The aim of branding is to be sure that all potential customers know about one’s brands. The way one does both of these things is by adopting a brand strategy.  Below is an aggressive strategy such as the ones that I have helped large, multi-national brewers carry out. Select from this list in a generous way and implement each selection.

Trademark Registrations Are Territorial

Except for a very few, absolutely famous trademarks, a trademark registration will not provide trademark rights beyond the jurisdiction providing the registration.  There are great stories in trademark law about people visiting foreign countries, seeing a nice product with a nice mark connected to it, and taking the entire concept of the product and mark to another country and, more or less, cloning the product.  Later, the originator decides to move into the same country and finds that it has no rights to use its trademark there.  Trademark registrations are territorial.

I have had some interesting cases showing such twists and turns. I represented a Dutch milk (not beer) coop which had made a popular condensed milk product in Vietnam (used to make wonderful Vietnamese coffee). The mark had been expropriated by the Communist Vietnamese government.  But Vietnamese immigrants to the USA demanded the product and the former managers of the Vietnamese subsidiary who were among these immigrants developed the brand in the US under the authority of the Dutch Coop.

When Vietnam went capitalist, the milk company which had evolved out of the seizure from the Dutch tried to bring into the US a close version of the Dutch product already here.  It lost in court.

Another situation causing great agitation for AmBev, the owner of the Budweiser beer brand, involves prior use of Budweiser by European brewers blocking attempts by AmBev to obtain Common Market trademark registrations (and a reverse situation where the Czech owner of perhaps the oldest Budweiser trademark must change its brandname for its been when it sells into the United States).

Strategic Trademark Registration

  1. Obtain trademark registrations for each beer brand in BLOCK LETTERS in each country where the beer will be sold, because trademark rights are territorial.
  2. Obtain a trademark registration for one’s House Mark in BLOCK LETTERS in each country where the beer will be sold, because trademark rights are territorial.  I have previously written about House Marks.
  3. Obtain trademark registrations for each beer and can label (including all colors and graphics) in each country where the beer will be sold, because trademark rights are territorial.  An advanced trademark program is going to be concerned with look alike labels.  It is too easy for a bartender or consumer to pick up the wrong bottle, can or six pack if the labels are too similar.  A few mistakes and the brewer that has simulated the popular label will find its sales increasing.
  4. Obtain whatever protection is available for any special bottle or can colors and shapes. In the U.S., such protection is generally available through trademarks. In other countries, special design protection is available.
  5. Obtain trademark registrations for slogans used in advertising your beers.A good slogan can enhance even a one trademark brewery’s house brand mark. Some old standards are listed below:- The Beer that Made Milwaukee Famous (Schlitz)
    – The Champagne of Bottled Beer (Miller)
    – It’s All About the Beer (Heineken)Check out more great beer slogans here.
  6. Make appropriate trademark applications for goods distributed to bars and restaurants, such as signage, glassware, coasters, and for any items that are sold or licensed for sale, such as T-shirts with beer labels on them.

Many of the worst experiences that brewers face are caused by t-shirt companies printing what they consider to be parody t-shirts featuring pictures of beer cans or bottles along with statements like “I only drink

[name of beer] when I want to get blasted.”  Alcohol is a highly regulated business and the government frowns upon statements about beverages that imply potency, drunkeness, and the like.

A brewer should want nothing to do with such “parody” and the first step is to apply for trademark applications for the types of goods that might be bothersome.

Copyright Registrations Support Your Trademarks

  1. Depending upon how original and artistic one’s labels are, it may be possible to apply for and register copyright in the labels. Timely registrations can provide clout against competitors who copy too closely other’s labels.  Learn more about why applying for copyright registration is a good idea here.
  2. Company websites and advertising materials should be subject to periodic copyright applications and registration.

Police Trademarks to Stop Problems Early

  1. Review and dispute domain names containing house mark or brand marks or similar
  2. Have your trademark lawyers proactively watch your marks or employ a trademark watch service for USPTO applications for alcoholic and non-alcoholic beverages, restaurants and bars, and foods such as cheese and snacks; oppose similar names.
  3. Monitor Twitter, Facebook, etc. for derogatory comments about brands and take action by complaining to these services and/or referring to your lawyers.
  4. Check for new COLA filings for alcoholic beverages to assure that no similar names to your brands are applied for in COLA filings.  Small breweries, distilleries and wineries may never do anything beyond a COLA filing. Timely cease and desist letters can stop the use of similar names.  We have discussed why reliance upon a COLA alone is not a brand protection program.
  5. An owner of a registered trademark can file with U.S. Customs to prevent counterfeit or unauthorized imports of trademarked goods. Entry of such goods, when they are alcoholic beverages, is less of a problem than with some other goods.
  6. Review competitor advertising for misrepresentations of your brands or false or misleading claims as to their own brands. Take action if necessary.

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A COLA is Not a Trademark

By Chuck Knull

Before a brewer, winemaker or a distiller can put its product into kegs, cask, bottles, cans or boxes, the labels that it will stick on the packaging (including labels on imported product)  must be approved by the Alcohol and Tobacco Tax and Trade Bureau (TTB). The approval is called a Certificate of Label Approval (COLA).   Many brewers, winemakers, distillers, and importers mistakenly believe that the COLA has the same or similar importance to a U.S. trademark registration in terms of securing brand protection and/or clearing them from infringing other people’s trademark rights.  They couldn’t be more wrong.

When the TTB looks at COLA applications, one of the things it reviews is the brand name, i.e., the trademark.  If there is an exact match for the brand name for already approved product by another then the COLA may be denied. That is, if the TTB, which examines about 100,000 COLA applications a year, does not miss the duplication. Or not see the duplication as a problem because for it, the products are not the same.  A number of years ago, the owner of the mark BLACK & WHITE for whiskey had to sue a brewer who had come out with BLACK & WHITE for beer,  And Remy Martin, with its REMY mark for Cognac, had a trademark battle with a wine called F. REMY.  The fact that all the products had approved COLAs did not help the two brands which were the latecomers.

If there is no match for the brand name, and the COLA is approved, the brewer, winemaker or distiller should not even think for a moment that it has a clear brand name/trademark for its product. A COLA approval is not a trademark clearance.  The fact that a COLA application is made and approved is, of course, great evidence that the applicant has a bona fide intention to use the trademark, but that will not be enough to carry the day if there is use or even a prior, bona fide intention to use, the same of similar mark.

This is because trademark law does not work only on exact matches of terms in a given mark.  Trademark infringement happens when there is likelihood of confusion.  Under the criteria for finding likelihood of confusion, trademarks for soft drinks, restaurants, and cheese, to name a few, have caused problems for marks for alcoholic beverages. I have had the experience of representing the makers of MURPHY’S IRISH STOUT, which of course, had a number of approved COLAs for its brands and container labeling and had been brewing since 1856, when a restaurant named Murphy’s tried to cancel its US trademark registrations. There are legions of other such cases. The owner of the BOAR’S HEAD trademark for meats had to sue a brewer who came out with BOAR’S HEAD beer,.  The owner of BLACK LABEL for beer had to litigation against a cigarette maker that came out with BLACK LABEL cigarettes.

The only way to assure trademark clearance is to obtain a full clearance trademark search which, after analysis, shows no blocking trademarks in use.

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Should I Register a Bunch of Trademarks for My Products or Adopt a House Mark?

By Chuck Knull

A “House Mark” is a trademark that is used to identify the source of a line of products rather than a single product. A company can have trademarks on each of its products and also have a trademark that appears on all its products. The latter is the House Mark.

Trademarks began as signs on stores and identifying marks on products. One went to the Red Lion Tavern because one knew about and relied on its quality of bangers and mash and the strength of the tavern’s ales. If another Red Lion Tavern appeared in the village, the first tavern could sue to have the second tavern change its name. As consumer products came about, purchasers of cough syrup, for example, would look for product names they recognized and trusted. The names and labels on these products became trademarks. If someone else came along and tried to sell cough syrup with a name and label that too closely resembled those of an established brand, the second comer could be sued for trademark infringement and unfair competition. When a maker made only one type of cough syrup, then its brand name was both the house mark and the product’s trademark.

Today trademark law is a consumer protection law. A trademark is registered to a person or company that uses the mark to identify its products so that consumers associate the mark with assurances that the quality, whether good or bad, is what is expected from that product. The first user of a mark is the one who has the rights in it so long as they continue to use it in commerce. Under the current law, the Lanham Trademark Act, a first user who has registered its mark can enforce their rights in the mark in federal court and obtain sanctions against the second comer ranging from injunctive relief to the infringer’s profits. If the infringement is found to be is willful, or done with knowledge of the earlier mark, the first comer may be awarded its legal costs and treble damages.

Adopting a Mark. A House Mark offers immense advantages if it is based on a trademark which has been in long use, such as a mark based on a successful product or successful store name. Trademark protection grows in strength over use time through use of the trademark on a service or product, so choosing an already strong name and enlarging the scope of products or services available in association with the mark allows a business to start off strong.

Thus, the best and strongest House Mark is one which is already a famous trademark or service mark, and if a company is fortunate to have such a mark available or be able to license such a mark for use on a new line of products or services, it can be solid gold. An example of this is the Vicks mark which is strong or famous on VICKS VAPORUB and is now being extended to use on vaporizers, thermometers, tissues and other “cold related” products. Currently, the TIDE Brand of laundry soap is being extended into laundermats.

If a business does not have a strong and long used store name, then it should look for a trademark that is a “coined” or an invented word. For example, a retailer with the House Mark QUALITY DRUGS (a “weak” mark until it has been used for years) might concoct a new mark such as QUADRU, which has no meaning in itself and takes a bit of thought to connect to either quality or drugs. If invented terms are not to a retailer’s liking then adopting a House Mark which is “suggestive” of the products on which it will be used is the next best approach. For example, a retailer could use the mark QUALITY HEALTH for dietary supplement products, citing a suggested benefit of the products. The worst type of mark to adopt, especially as a House Mark, would be a “descriptive” mark. If a store or manufacturer used the House Mark QUALITY DRUGS PRODUCTS the mark would merely be describing what the products. Such marks are not enforceable without huge amounts of evidence that consumers only associate the House Mark with the products. And that evidence can be difficult or impossible to gather.

Definitions

Trade Dress. Trade dress describes the packaging of products. Trade dress can operate as a House Mark. Examples of such is the Coke Bottle and the MacDonalds Golden Arch.

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Why Should I Apply for a Copyright Sooner Rather Than Later?

By Chuck Knull

Making your company’s products or services appear special and different from the competition involves branding. Branding involves the use of trademarks to identify the source of products. Protecting your brand also requires careful attention to the protection available under copyright laws, as copyright protection can enhance trademark protection.

The Federal Copyright Act protects the “original expression” of an idea or ideas when such expression is “fixed”, that is, when it is printed, painted, recorded or filmed. The ideas themselves are not protected by copyright.

Anybody making or marketing consumer products must seriously consider registering copyrighted material such as the text and illustrations of a web site, posters, print advertising, website videos, infomercial recordings, the labels on the goods and its packaging, and any instructional or informational material packed with products or offered as handouts.
The owner of a copyright has the right to prevent (by injunction) others from copying, distributing and otherwise using the copyrighted material. If the copyright owner has made a timely filing of an application for registration of the material with the U.S. Copyright Office, the copyright owner can also recover “statutory damages” (in practice, a form of punitive damages) and its own attorney fees from the infringer. Thus, as a simple infringement might not carry much in the way of monetary damages with it, a person who makes timely registrations of its material can make it extraordinarily costly for anyone to copy such material.

Since people bent on borrowing a company’s good will by trading on another’s trademarks ordinarily don’t mind also borrowing packaging, web site text, or instructional inserts. Why do the work when it is so easy digitally to copy? Having registered copyrights, combined with a trademark infringement suit, can obliterate such an infringer. An application for copyright registration is a simple document to complete, can be done on line, and the government filing fees start is only $35.00. Few protective actions are as cost-effective and simple to do.

For example, Company C owned the trademark registration for MIGHTY GOAT for a very successful goat milk soap made with the milk from our famous Catskill goats that bodybuilders can use to wash the oil off their bodies after competition. It has also registered the wrapper design and the product information sheet of its product at the U.S. Copyright Office. Company Y comes out with a competing soap called MIGHTY SHEEP that it claims is “compare to MIGHTY GOAT.” Company Y also copies the text of Company C’s product information sheet inserted in the product box. A court finds that using “compare to MIGHTY GOAT is permitted even though Company Y’s soap has sheep milk in it. But it also finds that the product information sheet was a copyright infringement, and awards the owner of MIGHTY GOAT statutory damages of $100,000 plus its attorney fees (no small sum, since it had laid out $40,000 to its lawyers.) On the hand, if Company C had not timely registered its copyright. All the Court can award in this situation is actual damages of $100 for the reasonable licensing fees for the infringing information sheets. No attorney fees.

A couple of examples from my real life practice also show how this works.

A while ago, I had a client discover that photographs of its products were appearing on another website that was offering the products at substantially reduced prices. We could not be sure if the products were actually sold there, or whether the website used the products as a “bait and switch” and would ship substitutes if my client’s were ordered. The business did regularly register copyright in its website including such photos, so we were able to get the photos and the products taken off. The fact that we had the registrations acted a sledgehammer to make our point. Had we not had it, the pictures might still be up. The fact that the materials were registered for copyright before the commencement of the lawsuit made any fight by the infringers a bad tactic as it stood to pay all its own legal fees and also fund our legal fees during such fight.

On the other hand, I also helped a client who had been wrongfully sued for copyright infringement by a software program owner who claimed that the client was using its program without a license and thus infringing copyright. The program owner claimed that its was owed statutory damages and its attorneys for this infringement, but we were able to establish early in the case that the program owner had not applied to register the copyright until right before it brought the law suit. We convinced the judge to knock out the claims for these extra penalties in a summary judgment motion, which left the program owner with a small claim for lost license fees. When it could not prove any infringement at trial, our client was vindicated. However, had the program owner actually registered its copyright at the right time, my client might have been forced to settle for a large payment rather than fight the case and risk not convincing the court that it had not infringed.