Intellectual Property Webinar Series 1. IP Prosecution Pitfalls in Litigation: Trademarks and...

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Intellectual Property Webinar Series

IP Prosecution Pitfalls in Litigation: Trademarks and Copyrights

(Part 2)

April BeslCincinnati, [email protected]

Karen GauntCincinnati, [email protected]

Lynda RoeschCincinnati, [email protected]

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Pitfalls in trademark prosecutions can occur

Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights

Pre-filing

» Searching

Filing

» Preparation of application

Prosecution

» Interaction with USPTO

Post-registration

Dinsmore & Shohl LLP l Pitfalls in IP Litigation: Trademarks and Copyrights 5

Why Does It Matter?

What you say and do in before, during and after prosecution of a trademark and copyright can last forever!


Lasting Effects?

Opposition Proceedings

Cancellation Proceedings

Litigation

Cease and Desist Letters

Enforcement Actions on the Web

Renewals of Trademarks


Pitfalls Prior to Filing — Not SearchingTrademark Searching Issues

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Why do we search?» Assess Risk of Use

» Assess Risk of Registration

» Assess Issues That Might be Raised in Prosecution such as

likelihood of confusion, descriptiveness and genericness

» Defense to Willful Infringement Claim

» Save future expense


What Pitfalls are Avoided by Searching?

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Know the Landscape» Third party uses» Descriptiveness/disclaimer» Genericness» Surname» Geographical indicators

Can modify the mark to make it distinctive and registrable

Can define the goods/services to avoid potentially conflicting marks

Can create a good faith defense


Preliminary searches

Scope:

» Federal register

» State register

Additional capabilities:

» Foreign countries

Google.com search » Common law usage

» Some internet usage

Full searches scope:

» Federal register

» State registers

» Common law

(product guides, telephone

books, articles)

» Web common law

» Business records

» Domain name registry

» Internet usage

Trademark Searches and Clearance


Mark » Standard Characters

» Design Element

Drawing

Owner’s Name

Goods/Services

Filing Basis / Use or Intent-to-Use

Date of First Use in Commerce

Specimen

Fee» Depends on the method of application—TEAS, TEASPLUS

Federal Registration Process



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Prosecution:Currently 3 Months to Initial Review

Office Action Issued

Technical Deficiencies

Description of Goods & Services

Disclaimer Requirement

Substantive Refusal

Likelihood of Confusion with another mark

Descriptiveness / Genericness

Surname refusal

Deceptively Misdescriptive

Geographical Indicators


Trademark PITFALL #1Filing in the name of the WRONG owner


Scenario #1

ABC Widgets, Inc., wants to sell a new gadget next year under the

mark WIDEGTA.

Files an intent to use” application with the US Trademark Office but

accidentally files in the name of “ABC Widgets, LLC”

The Statement of Use is rejected for being filed in the wrong name.

What can ABC Widgets do?


Scenario #1: What can ABC Widgets do?

Certain errors can be corrected by amendment:

1) Name listed is trade name – not a legal entity

2) Name listed is operating division of applicant

3) Name omits minor clerical error – e.g. The or Inc

4) Old name of company listed where change of name took place

before filing

5) Entity listed did not exist


What if ABC Widgets had filed in the name of it’s sister company DEF Widgets, Inc.?


Non-Correctable Errors

Certain errors cannot be corrected with an amendment.

In fact! Errors in owner name can VOID an application as filed


Scenario #1 – One Last Tweak

ABC Widgets, Inc., files an assignment of the intent to use application transferring the mark from its sister corporation to it to try and “fix” the situation.

Will this work?


Assignment of ITU applications are only allowed to successors in interest of the

business


Lasting Impact?

Application / Registration vulnerable to opposition or cancellation

Lost registrations and applications negate priority and protection


How to avoid ownership pitfalls

Ask the right questions!

Who owns the mark?

Have corporations or LLCs been formed?

Have transfers taken place?

Who owns the application?

Discuss intended use with client to guide ownership


Trademark PITFALL #2

Amendments to the Supplemental Register


Applications for

merely descriptive marks

can sometimes be amended

to the Supplemental Register.

Still allows for

nationwide priority and

protection


Scenario #2

Company A and Company B

are competitors in the cleaning

products field.

Both independently create

a new cleaning product under

the mark QUICK DRY CLEAN.


1/1/2013Company A Files ITU Application

2/1/2013Company B Begins Using Mark

3/1/2013Company B Files Use Application

4/1/2013Company A Begins Using Mark

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Trademark Office issues Office Action on

descriptiveness grounds. In response,

Company A files Statement of Use and

amends the mark to the

Supplemental Register.

All clear for Company A?



Filing of the amendment

to the Supplemental Register

changes the priority date to the

filing date of the Statement of Use!

Company A is Now the “Junior”

to Company B – Both in Use

AND at the Trademark Office!


Lasting Impact?

Company A’s application will now be refused for likelihood

of confusion with Company B’s “senior” application

Company B could even stop Company A

from moving forward with product line!


Perform searches of register before filing amendments to the supplemental register

Discuss risks of descriptiveness with client



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Be careful when responding to Office Action to avoid statements against interest

Be careful in response to office action when arguing against 2(d) cites

If third party has priority, you may want descriptiveness as a defense


Trademark PITFALL # 3

Specimens. Specimens. Specimens!


In order to achieve registration an applicant must show use of the mark in commerce through the filing of a specimen of record

Specimen Must Be Included For Every Class in the Application


Specimens for Goods:

Must consist of a label, tag, or container or a display associated

with the goods

Can also be websites in certain circumstances

Specimens for Services

Can consist of advertising material


Beware Token Specimens

Specimens must show actual use in commerce

Cannot be “one off” printings of a single label


Scenario #3

You Make It We Sell It specializes in retail sale of products ranging from clothing to toys to linens.

As part of its IP strategy, it wants to file applications for the goods it sells, not just its retail services.

Company files to register the mark WHAMMO across six different classes of goods of 50 goods per class.


For its Statement of Use, You Make It We Sell It includes a picture

of a single label on one product in each Class.

The Statement of Use was accepted and the mark registered

They’re home free right?


Not So Fast…

Proof of use for all goods may be necessary in enforcement!

Competitor could move to cancel registration for any goods not being used!


Scenario #3 - Revised

The mark that actually appeared on the label was WHAMMO!

There is NO ISSUE from punctuation, right?


Little Changes Matter


Amendments May Be Possible

WHAMMO to WHAMMO!

If the change is not “material” you may be able to amend the application to seek registration of the “altered” mark


Documentation. Documentation. Documentation.

Strategy for Specimens


Strategy for Specimens

Understand the importance

of specimens and the rules in play

Having the “hard” talk up front can save

a registration in enforcement later on

“Is this specimen really in use?”


Post Registration Process:Section 8 Filing (Renewal)

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Between 5th and 6th Anniversary of Registration

» Fee per class: $400

» Specimen of Use in the US

» Declaration of Continued Use

» Opportunity to Revise Protected Goods in Use

» Grace Period for 6 months (additional fee: $100 per class)

» Make sure Mark is same as Registration

» Make sure Goods and Services are same as Registration

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PITFALL # 4: Copyright

Not filing for registration timely



Registration of a Copyright is not required for protection….

BUT! Failing to file timely can have a lasting impact on lawsuits to enforce that copyright


Scenario #4: Copyright infringement?

Teri Holmes is a singer songwriter who writes a brand new song called “Teri’s Song” on January 1, 2013. She begins performing the song publicly and is getting a lot of attention and positive feedback.

On June 1, 2013 she discovers a male artist named Johnny Mack is performing and selling a similar song called “Johnny’s Song.” She immediately files a state lawsuit against Johnny for copyright infringement.

She files in State Court


What did Terri do wrong?

She didn’t file a Federal Registration before filing the lawsuit


Did You Know?

A Copyright Registration is REQUIRED

to Bring a Federal Lawsuit


Scenario #4 – RevisedHas Terri done everything right now?

Instead of filing in state court, Teri now files

an expedited copyright application and

then immediately files in Federal court.

She claims statutory damages and

attorneys fees under the Copyright Act.


No….

She registered after she learned of the infringement and beyond

3-months after publication she cannot claim statutory damages or

attorneys fees in her lawsuit.


Section 412 of the Copyright Act:

No award of statutory damages or of attorney’s fees for …

Copyright infringement in an unpublished work … before the effective date of its registration

Infringement… after publication and before registration, unless made within 3 months of the first publication.

Therefore Can Only Be Claimed Where:

1) The work was registered prior to the infringement

2) Registered within 3-months of publication


Strategy for Filing

Consider filing prior to publication or within the 3-month window to be safe

If your work is getting “play” don’t let the 3-month window pass you by!


PITFALL # 5:

Filing deposits with the US Copyright Office including confidential information

The Scenario:

XYZ Corporation files a copyright application for the code to a piece of software it sells. The code incorporates certain coding that is considered to be a trade secret of the company. When XYZ Corporation uploads a deposit copy of the code, it does not incorporate any redactions.


By filing the deposit with the Copyright Office, XYZ Corporation destroyed its trade secret rights!


You must REDACT any confidential or proprietary information!

Clients must understand where IP protections intersect!


PITFALL # 6: Copyright

Not filing registration in the name of the right owner


Scenario # 6

John Smith is a software engineer for Widgets USA, Inc. He writes a brand new software program for consumers to measure the effectiveness of the widgets in practice. Widgets USA, Inc. goes to the Copyright Office and mistakenly lists John Smith as the author and claimant.


Trouble Ahead…

Widgets USA, Inc. couldn’t enforce its copyright without its own software engineer being a plaintiff to the litigation!


Best Practice: Always Pay Attention to Ownership!

Always pay attention to ownership!

It can be just as troublesome where a company

has an independent contractor do the work without

transferring ownership in the end

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Intellectual Property Webinar Series

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Intellectual Property Webinar Series 1. IP Prosecution Pitfalls in Litigation: Trademarks and...

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