Branding and Trademarks: The U.S. Legal Framework
Frederick A. Spaeth JD, MBA December 15, 2016
Presented to:
STATE ADMINISTRATION FOR INDUSTRY & COMMERCE
of the PEOPLE’S REPUBLIC OF CHINA
Forbes Most Valuable Brands 2016
• Top Industries: Technology (17 brands), Financial services (13), Autos (12), Consumer package goods (10), Luxury (8), Retail (8).
• Top 5 by Brand Value: Apple, Google, Microsoft, Coca-Cola, Facebook
• Top 5 by Brand Value Growth: Facebook, Google, Microsoft, Apple, Coca-cola
• Top 100 Brand Industries include: Aerospace, Alcohol, Apparel, Automotive, Beverages, Business Services, Consumer Packaged Goods, Diversified, Financial Services, Heavy Equipment, Leisure, Luxury, Media, Restaurants, Retail, Technology, Telecom, Tobacco, Transportation
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A Trademark Represents a Brand
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Value / Price
Premium
Identity and Image
Customer Expectations
BusinessReputation
TM
Brand Loyalty
Key Functions of a Trademark
A trademark carries the brand message, which helps bring value to a company by generating :
- Initial Customer Interest, and- Repeat business
Businesses protect their trademarks in order to preserve the value of the brand to the company.
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U.S. Trademark LawBasic Principles
The basic purpose of U.S. trademark law is to protect
- the public's interest in protection against deceit
as to the sources of its purchases, [and]
- the business's right to enjoy business earned
through investment in the good will and
reputation attached to a trade name
from “Likelihood of Confusion”
See Christian Louboutin v. Yves Saint Laurent America, 696 F. 3d 206 (2nd Cir. 2012).
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Basic U.S. Trademark Rights (“Common Law”)
In case of Likelihood of Confusion, the Senior (first) user has priority to seek:- Order to stop use of a mark by a
“junior (later) user”- “Damages” (compensation for
losses, damage to reputation, etc.)
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Protection and Enforcement:Two Legal Systems
Two Kinds of Legal Rights
• Federal
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• Registration(U.S. PTO), or
• “Common Law”(Unregistered)
• State-by-State• Registration
(Secretary of State), or• “Common Law”
Key Steps for a New Mark
• Select the Mark
• Clear the Mark
• Register
• Protect
• Use Properly
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Selecting A Mark
Will a simple translation of an existing mark from China work well in the U.S.A.?
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Selecting A MarkPossible issues with “imported marks”
- Some marks are not protectable under U.S. law(surnames, descriptive, mis-descriptive, etc.)- Possible negative or distracting connotations
from direct translations.- Possible differences in values held by target
customers (e.g., desire to display purchase vs. desire for self-expression; reliance on business reputation vs. appreciation for innovation).
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Selecting A New Mark
Choose a Strong Mark
Strength Protectability
• Strong marks are immediately protectable.
• Strong marks are more widely protectable.
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Selecting A New Mark
What makes a mark “Strong” and Protectable?
… Distinctiveness !– In relation to the product or service, or to your
intended customers;
– In relation to marks in use by others (especially for competitive or complementary goods and services)
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Selecting A New Mark
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A Strong, Distinctive Mark may be:
• Fanciful (a made-up word), e.g.,
SPOTIFY
• Arbitrary (no inherent connection to the product, service
or customer)
APPLE computers BLUE DIAMOND nuts
• Suggestive (but not Descriptive)
GREYHOUND KLEENEX ENERGIZER
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Selecting A New Mark
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What does a ‘weak’ mark look like?
A mark that describes the goods or services (by naming ingredients, characteristics, customers or
type of provider)
is weak, and not as protectable as a strong mark.
• MODERN CAMPER for sales of camping equipment
• CARBON ELIMINATOR for fuel additive to remove carbon deposits
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Selecting A New Mark
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A STRONG mark also stands out fromthe other marks already in use.
• Don’t choose a mark that gets lost among thecompetition
There are more than 6500+ U.S. registered marks that include “SUPER”; more than 5000 that say “GOLD”
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Clearing a New Mark
Best practice = “clear” a mark before using it, i.e.,
Search for similar marks already registered or in use, to avoid Likelihood of Confusion, and so …
• Avoid being a target of legal action by a Senior user.
• Enhance chances for registration.
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A Business Should Register Its Mark
Many Benefits of Federal Registration:
• Strengthen your rights and help others avoid infringing your mark
• You can say “ACME is a registered trademark”
ACME tablet computer
• Inhibit use and registration of similar marks by others
• Nation-wide notice of your ownership of the mark
• And more...
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Federal Registrations are limited to:
• Goods and/or services actually sold in U.S. commerce.
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Application for Federal Registration
Can be based on:
• A valid registration in China, or
• Actual use in U.S. commerce, or
• A bona fide intention to use the mark in U.S. commerce
• Official filing fee $325 per class
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Federal Registration Process
- Initial examination of application: refusal of marks that would cause likelihood of confusion; “merely descriptive” marks, surnames, etc.
-Publication for Opposition
-Post-registration Renewals
-Post-registration Cancellation© Copyright 2016 20
Protect A Mark
Protecting a mark against Likelihood of Confusion
= taking action against infringers
• Cease & Desist; Oppositions; Litigation
• U.S. Customs
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Using the Mark
A word mark should stand out:
• Visually - size
• Stylistically – font, color
• With “TM” or “SM” or when registered.
Right: “Get a STAND OUT™ server for your
network”
Wrong: “Get a Standout for your network”
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THANK YOU!
Frederick Spaeth, Esq.Dilworth IP, LLC
2 Corporate Drive Suite 2206Trumbull, CT 06611
[email protected] https://www.linkedin.com/in/fspaeth
© 2016 This work is licensed under the Creative Commons Attribution-NonCommercial-
NoDerivatives 4.0 International License. To view a copy of this license, visit http://creativecommons.org/licenses/by-nc-nd/4.0/
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