Structuring Trademark Clearance Opinions Assessing Search Results to Identify Infringements, Overcoming Clearance Challenges,
and Preparing Opinions to Reduce Legal Risks
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WEDNESDAY, SEPTEMBER 10, 2014
Presenting a live 90-minute webinar with interactive Q&A
Richard C. Gilmore, Registered Patent Attorney, Maschoff Brennan, Park City, Utah
George R. McGuire, Member, Bond Schoeneck & King, Syracuse, N.Y.
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Structuring Trademark
Clearance Opinions
© 2014 Maschoff Brennan
Richard C. Gilmore
435.252.1371
Introduction to
Trademark Searching
Trademark Searches Provide:
• Basis for opinion
• But keep limitations in mind
6
Introduction to
Trademark Searching
Trademark Searches Determine
Whether a Particular Mark is:
• Available for use without serious risk of
infringement of the rights of a prior user • Available for registration
• Potential strength of the mark 7
Trademark Search
should help determine if:
1. If a mark is available for use
2. If a mark can be registered
3. Potential strength of the mark
8
Why Conduct a
Trademark Search?
• Identify Risks
• Reduce Costs
• Avoid rebranding
• Avoid litigation • Expedite prosecution of application
9
What Information is
Needed for the Search?
Nature of the Specific Trademark
• Combination • Stylized Script
• Logo
• Word(s) DRINK COKE®
10
What Information is
Needed for Search?
If it is not English—Origin and Meaning
Word origin: Spanish
Meaning: Boss
11
What Information is
Needed for Search?
If the Mark Includes an Acronym What Does it Stand For?
Bavarian Motor Works
12
What Information is
Needed for Search?
Examples of the Way it Will Be Used
Websites Letterhead Merchandise 13
What Information is
Needed for Search?
Complete List of Goods and Services
14
What Information is
Needed for the Search?
Budget
• Resources to search
• Review of the search results
• Investigation into marks of particular interest
15
What Information is
Needed for the Search?
Deadline for the Results
• Scope of search may affect timing
• It may be necessary to investigate risks
posed by specific marks
16
What Information is
Needed for the Search?
Level of Review of Search Results
• Simple identification of relevant marks
identified in the search
• Evaluation of the results
• Formal legal opinion
17
How Much Time
Should be Allowed?
• Searching should commence well in
advance of the product launch
• Additional time may be required for
investigation of potential risks
• More time will be required if adverse
results are received
Timing Requirements
18
Types of
Trademark Searches
Preliminary or “Knock Out” Searches
1. U.S. Patent and Trademark Office Records
2. Internet Searches
• Identical marks
• Obvious spelling variations
• Same international class
• Similar goods/services
19
Types of
Trademark Searches
Full or Comprehensive Search includes:
• U.S. Patent and Trademark Office Records
• State Trademark Office Records
• Common Law Uses of the Mark
20
Types of
Trademark Searches
Common Law Uses of the Mark may include:
• Internet – web uses
• Business name directories
• Trade directory databases
• Domain names
• Telephone directories
• Newspapers, Journals
• Case law 21
Types of
Trademark Searches
Full or Comprehensive Search Includes:
• Identical marks
• Phonetic equivalents
• Plural forms
• Reversal of terms
• Similar character strings
• Similar word formatives
• Similar look, sound, and/or meaning
• Similar in length
• Acronyms/Word equivalents 22
Types of
Trademark Searches
Full or Comprehensive Search Includes:
• Identical goods
• Related goods
• Identical or nearly identical marks with
unrelated goods
23
Trademark Searching
Limitations Inherent in Trademark Searches
• Database updates
• Synonyms
• Misspellings
• Connotations
• Foreign claim of priority
• Translations
• Subjectivity 24
Trademark Searching
Test for Likelihood of Confusion includes:
• Strength of mark
• Similarity between the marks
• Similarity between the goods/services
• Actual confusion
• Purchaser sophistication
• Whether use of the mark was in good faith 25
Trademark Searching
Can the Mark can be Registered?
• Is the Mark Descriptive?
• “APPLE” for computers vs. “Apple” for fruit
• “ANALOG DEVICES” for devices with analog
capabilities
• “QUIK-PRINT” for printing services
• “GRAND HOTELS” for hotel services
26
Trademark Searching
Can the Mark can be Registered?
• Is the Mark Misdescriptive?
• Falsely indicates an ingredient, quality, or
characteristic of the goods/services
• Not protectable
• May be Subject to False Advertising Claims
• “Titanium” for vehicles that do not contain titanium
• “Dura-Hyde” for plastic shoes with a leather-like
appearance
• “Softhide” for imitation leather material 27
Trademark Searching
Can the Mark can be Registered?
• Is the Mark Generic?
• “HAND WASH” for hand wash
• Aspirin
• Escalator
• Heroin
• Thermos
• Videotape
28
Trademark Searching
Can the Mark can be Registered?
• Is the Mark Primarily Merely a Surname?
29
Trademark Searching
Can the Mark can be Registered?
• Is there Some Other Impediment to Registration?
• Geographically Descriptive
• “PARADISE ISLAND AIRLINES” for airline services to
Paradise Island
• “CALIFORNIA PIZZA KITCHEN” for restaurant
services
• “HERSHEY” for chocolates
30
What Action is Available
for Adverse Results
Avoid claims of Trademark Infringement or Refusal to Register the Mark
• Abandon the preferred mark and adopt an alternative
• Determine if prior mark is vulnerable to cancellation
• Acquire the prior mark
• Obtain consent from the owner of the prior mark
• Obtain a license to use the mark for specific goods or services
31
Best Practices
Clearance Opinions
• Should opinion be oral or written? oOral if requested by client; common reasons:
− If unfavorable opinion, does client want it disclosed orally
instead of in writing
−No written record (and circumstances may change over
time + may not anticipate all possible defenses at time of
opinion)
−Regardless of opinion, in order to avoid costs associated
with drafting the opinion
33
Written Opinions
Skeleton
• Background
• Caveats
• Executive Summary
• List of Pertinent Marks and/or Landscape
• Analysis/Risk Assessment o Suggestions to avoid/minimize risks
• Conclusion
34
Background
• Context for the opinion -- include: o The candidate/proposed mark.
o The client’s plans for use of the candidate mark.
oWhether the opinion addresses both use and
registration or only use.
o Any other background information the client has
provided and on which counsel relied in assessing the
significance of the search references.
35
Caveats
• Common caveats: o Potential omissions from the search report owing to the timing of
database updates and searcher subjectivity
o Assumptions about the completeness and reliability of the content
of the source databases
o Subjectivity of Trademark Analysis (“reasonable minds may
differ…”)
o Conflicts based on meaning of marks; e.g., London Fog v Smog,
Lollypop v jellibean, Cyclone v Tornado (no good way to search
similar meanings)
o Design/Trade Dress – search tools not very good at searching
design marks and trade dress
36
Executive Summary
• Typically 1 - 3 sentences o Indicate conclusion as to whether mark is available for
use and/or registration
oMay restate any assumptions/caveats
37
List of Marks
• Pertinent/Problematic Marks o Typically list in table form with column headers:
−Mark
−Goods/Services
−Status
Registered, Pending application (ITU v. Use), Common Law
only
−Register/Common Law Source
Federal, State, Common Law
−Owner
38
Landscape/General Interest
• If no pertinent marks uncovered o Identify as being landscape or of general interest only
(minimize impact)
o Briefly discuss how proposed mark differs
− In spelling/sight, sound, meaning
− In markets/market channels
− In goods/services
39
Analysis/Risk Assessment
• Thorough legal analysis of search results oUseful to apply factors as a court/PTO would apply
• Be open ended to permit additional reasons to
be articulated later if new facts later come to
light
• Explain significance of disclaimers,
cancellation, abandonment, if applicable o Explain trade name and domain name issues that may
differ from trademark analysis
• Other legal theories, if applicable oDilution, right of publicity, etc.
40
Registerability
• In addition to right to use, may also advise on
registerability of mark
• Factors PTO would consider oCompare with other marks on federal register
(pending and/or registered)
• Inherently distinctive versus descriptive issues o Principal versus Supplemental Register
41
Suggestions
• Where potentially conflicting marks are
uncovered, may want to suggest ways for client
to lessen the relevance of such marks oUse logo/design elements
oCombine with another mark to create more distinctive
mark
42
Challenging Potentially
Conflicting Marks
How to Challenge
• Argument oNo LOC (or other argument to distinguish)
• Cancel registration o If favorable facts, seek to cancel problematic
registration
• Seek Consent/Co-Existence o Alternative to Cancellation and/or if facts are suitable
• License/Acquire
44
Cancellation
• Petition for Cancellation of a Registration o 15 U.S.C. § 1064
• Bases for Petition: o Earlier first use + LOC/Dilution
−Within five years from the date of the registration of the
mark
o Abandonment/Generic/Fraud
−At any time after registration
45
Consent Agreements
• Cancellation may be viable option, but could be
expensive and take years to resolve
• Is it more practical to seek consent instead? oContract in which owner of one mark consents to the
use and/or registration of the same or similar mark by
another party
−Must point out why the parties believe there is no
confusion
−Detail how the parties will avoid confusion
46
Why No confusion?
• Differences in marks o If the marks are not identical but contain some differences, this
can be pointed out
• Differences in market channels o If one party promotes its goods/services in a different market
channel, this should be detailed
• Differences in markets/consumers o Similarly, if the parties serve distinct markets (e.g., professional
versus consumer)
• Differences in geography o If there are differences in the geographic distribution of
goods/services, this can serve as a basis
47
Avoid Confusion?
• Work together to avoid confusion
• Include other indicia of source oOther house mark?
oCompany name?
• Include disclaimers/advertising
• If alerted to actual instance of confusion, contact
confused party to dispel confusion
48
License/Acquire
• If feasible, consider whether mark might be
licensed and/or acquired
• If license: oQuality Control to be exercised by mark owner
o All goodwill will vest with mark owner
o Payment of royalties to mark owner
• If acquire: oWill acquire goodwill symbolized by mark
−Sometimes hard to value
49
Use of Opinion in Litigation
• Most typical use is as defense to charge of willfulness
o Might also be used to show good faith in bringing suit
• To be useful, opinion must be:
o Prepared by a “competent” attorney
− One with trademark specific experience and independence
o Based on adequate investigation
− Generally a “full” search
See, INTERNATIONAL STAR CLASS YACHT RACING
ASSOCIATION, v. TOMMY HILFIGER, U.S.A., INC. (search of only
federal records insufficient)
o Completeness
− Thorough legal analysis
50
Waiver of Privilege
• Production of opinion will waive privilege oNot just for opinion, but also all related documents and
communications associated with the opinion
−Search jurisdiction as to how far waiver applies to work
product (varies circuit to circuit)
51
Lawyer as Witness
• Is testimony from lawyer rendering opinion relevant and admissible?
o District courts have reached different conclusions as to relevance:
− State of mind of accused infringer is what is relevant
−Whether accused infringer withheld material from attorney might also be relevant
• Can attorney serve dual role as potential witness and litigation counsel?
o ABA Model Rule 3.7
− Lawyer shall not act as advocate at trial in which lawyer likely to be witness
Does not necessarily bar others at lawyer’s firm from handling litigation
− Should consult precedent in your jurisdiction as unsettled
52