- Posts by Heather RepickyPartner
Heather B. Repicky is a partner in the Litigation Department and a member of the firm’s IP and Patent Litigation practice group. She focuses her practice on civil litigation, with an emphasis on IP and complex commercial ...
Introducing a new how-to series about how to build a brand. Please check back periodically for the next article in our on-going series.
Nutter’s series on building a brand began with the selection of a trademark and the process of formally protecting a mark via trademark registration. More recent articles in the series have addressed policing a brand, proper trademark usage, and brand considerations in the social media environment. This article, the last in the series, focuses on additional post-registration considerations, namely: (1) exploiting your mark through licensing, including important quality control considerations; (2) applying to register branding elements in addition to the core plain text mark to enable more effective policing of your brand’s entire commercial impression; and (3) assessing the unauthorized use of your brand by third parties (or using another’s mark without authorization) for purposes of determining whether such uses are “fair” or, on the other hand, harmful and actionable.
To read more, click here.
What to Do Once Your Trademark Registers—The Brand & New Media
Eleventh in The Series
Nutter’s series on building a brand began with the selection of a mark and the process of formally protecting it via trademark registration. At this point in the series, the mark is registered and ready for use and investment to elevate it into a brand. One area that can impact your brand is the use of your mark in “new media,” such as the Web and social media services. New media works differently than anything that has come before and there is a great deal to consider, from reserving domains and usernames to monitoring use—both your own and others’—across these mediums.
To read more about building a brand through new media, please click here.
What to Do Once Your Trademark Registers – Avoiding Genericism and Dilution
Tenth in The Series
As discussed in the previous article in Nutter’s IP Branding Series, monitoring competitors’ use of your marks and marks possibly akin to your marks, and enforcing your rights in your marks against those competitors, is an important aspect of protecting and building your brand. Equally important is policing your own use of the mark, the use of your mark by licensed third parties, and the use of the mark by third parties that are neither competitors nor licensees. The graveyard of brands that were arguably too successful because the brand name became genericised is fraught with lessons to be learned in protecting the use of your mark. Dilution is also a concern, although it is becoming increasingly more difficult to successfully show that your mark is being diluted or tarnished.
Click here to read more about guarding against your mark joining the generic graveyard.
Our prior article in the series addressed the basics of what to do once your trademark registers, focusing mainly on your own use of the mark and supplemental submissions required to the United States Patent and Trademark Office (USPTO) in connection with your registration. Of course, your mark does not exist in a vacuum, and another category of activities you should undertake once your trademark registers involves monitoring the USPTO and other trademark offices for other potentially confusing or otherwise problematic marks and, where necessary, taking action to defend your mark. We also begin to address enforcing your mark through litigation, a vast topic that will be explored further in future articles.
To read more about monitoring, defending, and enforcing your mark, click here.
What to Do Once Your Trademark Registers – The Basics
Eighth in The Series
Following the conclusion of trademark prosecution, your certificate of registration has arrived in the mail. Now what? Over the course of the last three articles in our series, we will tackle this one, not so simple question. While a brand is nothing more than a mark (trademark or service mark) that has done well in life, like life, success comes with a little luck, and plenty of planning. Thus, obtaining the registration is truly just the beginning of your path to building a successful national or global brand. The present article will start with the basics—what you need to do to keep and maintain the trademark(s) you obtain.
To read more about keeping and maintaining your registered trademark(s) to help build and sustain your brand, click here.
Considering Your Brand during Trademark Prosecution
Seventh in The Series
The articles in our May and July editions of the IP Bulletin addressed eight of the most commonly asked questions that arise when completing a U.S. trademark application filing. Once the application has been filed with the USPTO, substantive examination by an examining attorney from the USPTO will commence in due course. In stark contrast to the long waits experienced by patent applicants, the average time between application filing and the issuance of a first Office Action is only 2.8 months at the time of this publication. There are many reasons why an examining attorney may initially reject a trademark application. When building a brand, an applicant should give special consideration to the response strategy before replying to any Office Action.
To read more about branding considerations when prosecuting trademarks, click here.
The article in our May edition of the IP Bulletin addressed four of the eight most commonly asked questions that arise when completing a U.S. trademark application filing. More particularly, we considered the trademark application form that should be used, the classes of goods or services to include in the application, the items included in the description of goods and services, and appropriate and acceptable specimen of use to be included as part of the application. The other four most commonly asked questions are tackled in this article, including: (5) should I include color or design features as part of my trademark application; (6) what is my filing basis; (7) what is my date of first use; and (8) what other considerations should I be making when preparing my U.S. trademark application?
To read more about the essentials of a filing U.S. trademark application, click here.
This fifth installment of Nutter’s continuing series on building a brand focuses on the essentials of filing a U.S. Trademark Application. The four commonly asked questions addressed in this article are: (1) what trademark application form should I use; (2) what classes of goods or services should I include in my application; (3) how do I decide what items I should include in my description of goods and services; and (4) what is an appropriate and acceptable specimen of use? Questions pertaining to color and design features, filing basis, dates for first use, and other considerations that should be made when preparing a U.S. trademark application will be included in our July edition.
To read more about the essentials of filing a U.S. Trademark Application, click here.
Where to File a Trademark Application: A Territorial Question
Fourth in The Series
Once you’ve checked off the five “Cs” and decided on the trademark you want to protect as part of building your brand, you next must decide where you want to file for protection. You see, even though Thomas Friedman has been driving the globalization “Lexus” since before the 21st century, and the reaches of the geography-obliterating, all-encompassing Internet and Mother Web connects Afghanistan to Zimbabwe, trademark rights themselves remain territorial. A single trademark application will not provide global property rights. This fourth article of Nutter’s branding series explores a trademark applicant’s various options regarding where to file a trademark application.
To read about three important territorial questions to consider when preparing a trademark application, click here.
Five “Cs” to Check-Off Your List Before You Decide on Trademarks
Third in The Series
This third installment of Nutter’s continuing series on building a brand focuses on considerations you should undertake before finalizing your selection of trademarks to build your brand. Before filing, consider taking the following five preliminary steps: (1) coordinate your efforts; (2) construct your trademark strategy; (3) conceive the overall design; (4) conduct a preliminary search; and (5) consider contacting an intellectual property professional. If you follow the five “Cs,” you can reduce the chances of finding yourself back at the drawing board coming up with a new idea for a trademark.
To read about how the five “Cs” can help make sure your branding strategy is on the up-and-up, click here.
Selecting a Trademark: Four Flavors of Trademark
Second in The Series
This second installment of Nutter’s continuing series on building a brand begins to address issues faced by businesses in selecting a trademark. In particular, the issue of trademark strength is examined, as it can be an important factor in a branding campaign’s success.
To read more about the impact of trademark strength on mark selection, click here.
What is a Brand?
First in The Series
Branding is often an important part of commercial success for a company, product, or line of products. However, there is often confusion surrounding how to go about identifying potential brand names, selecting the best one, protecting that name, and enforcing protective rights to avoid losing the brand’s unique association with the product. In a series of articles in the next several IP Bulletins, Nutter will address these various legal aspects of branding. Today, we start at the beginning with a discussion of what a brand is, and how it relates to the legal world of trade and service marks.
To read more about branding, click here.
The United States Supreme Court today overturned a $400 million verdict in a highly-publicized and long-waged patent battle between Apple and Samsung. Samsung Elcs. Co., Ltd. v. Apple Inc., 580 U.S. __ (Dec. 6, 2016). In doing so, it addressed design patents for the first time in 130 years and held that damages in design patent cases do not necessarily need to be based upon the profits made from a whole end product sold to a consumer, but may be limited to a component of that product. Nonetheless, the Court’s unanimous opinion, penned by Justice Sotomayor, may raise more questions than it answers.
“Infringement, whether direct or contributory, is essentially a tort,
and implies invasion of some right of the patentee.”
Louis D. Brandeis took his seat on the bench of the United States Supreme Court for the first time on Monday, October 9, 1916. That opening day of the new term included the swearing in of Associate Justice John H. Clark and oral argument on several motions. It also marked the beginning of Justice Brandeis’s twenty-three-year tenure (1916-1939) on the high court, which is now considered one of the most important in American jurisprudence. Justice Brandeis was not only the first Jewish jurist to sit on the Supreme Court, but he impressed upon his colleagues that the law had to reflect economic and societal realities. In essence, he brought the principles that guided him in the practice of law to the bench.
Nutter was co-founded by Justice Brandeis in 1879 and his legacy continues as a source of pride and inspiration for us today. To honor the hundredth anniversary of Justice Brandeis’s first session, we have summarized several of the patent opinions he authored below.
Almost a decade has elapsed since the Supreme Court’s decision in KSR Int’l Co. v. Teleflex, Inc. altered the law of patent obviousness. In reversing the judgment of the Federal Circuit, the Court in KSR limited the “teaching, suggestion, motivation” test and loosened the standards that both courts and the USPTO use to assess validity under 35 U.S.C. § 103. In particular, the Court expressly rejected the application of any inflexible obviousness rule that excluded consideration of, among other things, common sense.
The Federal Circuit, however, recently confirmed that common sense alone cannot suffice to establish obviousness. In Arendi S.A.R.L. v. Apple, Inc., the court held that the Patent Trial and Appeal Board (the PTAB) erred when it used common sense to supply a missing limitation in the prior art to arrive at the claimed invention. Not only is this case surprising in that factual findings of the PTAB are rarely overturned on appeal, but it also marks some constraints on the broad obviousness standard articulated in KSR.
Last week, a sharply divided Federal Circuit, acting en banc (6-5), decided SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC to the delight of accused infringers. Laches remains a defense to damage claims in patent infringement cases, even for damages sustained within six years before filing suit, despite the Supreme Court’s decision last year in Petrella v. Metro-Goldwyn-Mayer, Inc., which eliminated that defense for damage claims in copyright cases. The Federal Circuit also overruled prior precedent and held that laches may bar prospective injunctive relief. As a result, patent owners should put alleged infringers on notice and not wait to pursue their claims.
In Commil USA, LLC v. Cisco Systems, Inc. (No. 13-896, May 26, 2015), the United States Supreme Court held that a good faith belief in the invalidity of a patent is not a shield to liability for active inducement of infringement. In so holding, the Court eliminated a defense which the Federal Circuit established just two years ago. Justice Kennedy, writing for the majority in this 6-2 decision, however, made clear that the removal of this quiver from an alleged infringer’s arsenal of defenses is not an endorsement of patent trolls.
Nutter’s series on building a brand began with the selection of a mark and the process of formally protecting it via trademark registration. At this point in the series, the mark is registered and ready for use and investment to elevate it into a brand. Moving from a mere “mark” to a lauded “brand” takes us into the realm of marketing, as most of what makes a mark into a brand is the result of marketing investment around the mark. However, there are still many legal considerations to keep in mind as you begin using your mark and building it into your brand.
The United States is one of the few countries that requires a showing of use for extension of trademark protection. Accordingly, questions concerning how “use” can be established are important to both domestic clients and international clients filing trademarks in the United States. Traditionally the United States Patent and Trademark Office (USPTO) interpreted the use requirement flexibly, allowing most specimens submitted to the USPTO to constitute use. However, until recently, U.S. courts had not settled on what is sufficient to establish trademark use, at least with respect to service marks.
There are two types of taglines or slogans companies typically seek protection of, taglines tied to an advertising campaign or sales of a good or service, and taglines or slogans that are on merchandise intended to invoke or amuse people and drive them to purchase the merchandise. In deciding whether obtaining protection is a good business decision, most companies weigh the potential costs of obtaining protection against the strength of the mark for which protection is desired. A question that we commonly encounter when companies seek protection of a tagline is whether the tagline is even protectable. The short answer to that question is yes, usually.
Historically, the United States Patent and Trademark Office (USPTO) and the courts have been reluctant to extend trademark protection to slogans and taglines, leading to the reluctance of companies to seek protection at all. Over the past few decades, however, protection of taglines has become more commonplace, as it is now settled that the level of protection afforded to a tagline or slogan is the same as that for other trademarks. As early as 1970, the courts decided that slogans as trademarks are subject to the same scrutiny as non-slogan trademarks. See Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823 (C.C.P.A. 1970). Since then, courts and administrative bodies have followed the Roux Laboratories decision in evaluating slogan and tagline marks using the same scrutiny as non-slogan marks. For example, the Trademark Trial and Appeal Board affirmed registration of the slogan “AMERICA’S BEST CHEW” in 1986 because it had established secondary meaning. See Taylor Bros. Inc. v. Pinkerton Tobacco Co., 231 U.S.P.Q. (BNA) 412 (T.T.A.B. 1986).
To qualify as protectable, taglines or slogans must be either inherently distinctive or creative, or have developed enough secondary meaning to immediately call a product or service to mind. Secondary meaning is not typically a company’s first choice in establishing that a tagline is protectable. Descriptive taglines, however, require evidence of secondary meaning to be protectable. Secondary meaning refers to the distinction the mark has acquired with consumers to associate the mark with a source. This distinction can take time to establish, and can be proven with either five years of continuous use in commerce or substantial sales and advertising. Accordingly, unless the tagline is used in a substantial advertising campaign, establishing secondary meaning can be a lengthy and uphill battle with the USPTO.
More frequently, a tagline will be protectable if it is considered inherently distinctive or creative. Better protection is afforded to marks that are more distinctive or creative. Taglines and slogans are subject to the same scrutiny as non-tagline trademarks when being examined by the USPTO for inherent distinctiveness. Inherently distinctive or creative taglines typically consist of made-up words, words that are surprising or unexpected in the context of their usage, or words that cleverly connote qualities about the product or service. Examples of inherently distinctive taglines include Coca-Cola’s “It’s The Real Thing,” McDonalds’ “I’m Lovin’ It,” and Nike’s “Just Do It.” The threshold for inherent distinctiveness is not notably high. For example, “Your Financial Service is Our Business” was registered on the basis of inherent distinctiveness for insurance planning services, as was “From Maine’s Cool Breeze to the Florida Keys” for moving services. Although inherent distinctiveness is not a particularly high threshold, merely informational taglines are not protectable. Taglines such as “Think Green” or “Proudly Made in the USA” have been denied protection by the USPTO for being merely informational.
Generally, taglines and “traditional” trademarks are governed by the same rules. Accordingly, so long as a tagline or slogan is either inherently distinctive or has developed secondary meaning, a tagline is protectable as a trademark. If a tagline is closely linked to an advertising campaign or used frequently on goods or services, it is likely a good business decision to file for trademark registration with the USPTO.
This update was prepared by Heather B. Repicky, a member of the Intellectual Property practice of Nutter McClennen & Fish LLP. For more information, please contact Heather or your Nutter attorney at 617.439.2000.
This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.
Before the Supreme Court’s 2006 decision in eBay Inc. v. MercExchange, L.L.C., it was axiomatic that, upon a showing of a likelihood of success on the merits, a trademark owner was entitled to a presumption of irreparable harm when moving for preliminary injunctive relief. But after eBay, there was no such presumption in patent cases, leaving the question open whether the presumption would apply in trademark cases. Just a few weeks ago, on October 6, 2014, the Supreme Court denied certiorari in Herb Reed Enters., LLC v. Florida Entm. Mgmt., Inc., in which the Ninth Circuit held that trademark owners are not entitled to a presumption of irreparable harm simply by making a preliminary showing of a good case on the merits. Accordingly, the Supreme Court has left it to the circuits to resolve the presumption question in trademark cases, at least for now, causing litigants to query what evidence will suffice to establish irreparable harm without the presumption and to consider the prevailing law in the various circuits when choosing a forum.
Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.