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It is the new year and a lot of us resolved to work out more and get stronger. But don’t limit your strength training to just your muscles–your trademarks deserve a little boost as well!?

Why is trademark strength important?

U.S. trademark law recognizes a spectrum of distinctiveness that provides a sliding scale of trademark protectability. Judge Pierre Leval defined trademark strength as the amount of “legal muscle” possessed by a given mark.

The stronger the mark, the more uses the trademark owner may exclude from the marketplace through a trademark infringement or dilution action. Stronger marks are able to exclude more similar marks from the marketplace. Such increases can happen along two fronts: “appearance” of the trademark and the “goods or services” the trademark protects. The stronger a registered trademark is on the “appearance” dimension, the less similar the look, sound, and spelling a third-party’s mark must be in order to risk being excluded by the registered trademark. The stronger a registered trademark is on the “goods or services” dimension, the less similar the goods or services offered by a competitor using the same or similar marks must be in order to risk being excluded by the registered trademark.

A trademark’s relative strength or weakness will also have a direct bearing on its performance in the market. A mark that is highly distinctive functions as a strong mark, identifying the owner as the source of the covered products or services. When a mark is not distinctive or it may already be used by others on or in connection with different products or services, the mark is considered weak.

Therefore, trademark strength is extremely important for trademark owners as it has a strong impact on the value of the trademarks to their owners. It is generally easier and less costly for a trademark owner to acquire and enforce exclusive rights in a strong trademark that is distinctive and unique than one that is descriptive or highly diluted, i.e., widely used.

How is a mark’s strength or weakness gauged?

The relative strength or weakness of a trademark may be gauged by placing the trademark on a spectrum. The types of trademarks discussed below range from the strongest to the weakest.

  • Fanciful or Coined Marks. A fanciful or coined mark is at the strongest end of the spectrum because it is inherently distinctive. Such a mark consists of an invented word that is a combination of letters that has no meaning. For example: GOOGLE for online services, PEPSI for soft drinks, ROLEX for watches, and XEROX for copiers. Since a fanciful or coined mark has no inherent meaning, in the beginning, a bigger effort in terms of advertising is necessary in order to educate the public as to the relationship between the invented word and the owner’s product or service. However, these marks enjoy the broadest scope of protection against third-party use.
  • Arbitrary Marks. An arbitrary mark is composed of a word or words that have a common meaning in the language of the relevant jurisdiction; however, that meaning is unrelated to the goods or services for which the mark is used. Arbitrary marks, such as CAMEL for cigarettes and APPLE for computers, are considered highly distinctive in identifying and distinguishing products or services. As with fanciful or coined marks, the public must be educated as to the association of the arbitrary mark with the relevant product or service, but the scope of protection obtained is very broad.
  • Suggestive Marks. A suggestive mark gives consumers some sense of the nature of the products or services that a business will provide without actually describing the product or service. A suggestive mark is one that requires “a mental leap from the mark to the product”, or, “the consumer’s imagination, thought, and perception to reach a conclusion as to the nature of the goods or services.” Variety Stores, Inc. v. Wal-Mart Stores, Inc., 888 F.3d 651, 662 (4th Cir. 2018). Examples of suggestive marks are AIRBUS for airplanes and NETFLIX for streaming services. Suggestive marks can possess an inherent element of sales appeal and will require less education of the public than coined or arbitrary marks; for this reason, generally, suggestive marks are entitled to less-extensive protection.
  • Descriptive Marks. In general, a descriptive mark is a word (or words) that merely describes a product or that contains ingredients or attributes that are too weak to function as a trademark. An example of a merely descriptive mark would be COLD AND CREAMY for ice cream. Such a mark is very unlikely to be granted registration, as the phrase merely describes an attribute of the product. Words that merely describe an attribute, feature, end result, or use of the product, or the persons employed in its production, generally are not granted trademark protection. Merely laudatory terms such as “best” or “quality” also are generally not registrable. In some jurisdictions, surnames are treated as descriptive marks. What is initially a descriptive word may later become protectable as a trademark if it acquires secondary meaning. In other words, if a descriptive word is used and advertised exclusively as a trademark for a sufficient period of time, it may, in addition to having the primary meaning that is descriptive of the product, come to identify the mark as being associated with a single source of origin for that product. An example of a descriptive word that has acquired a secondary meaning and become protectable as a trademark is SHARP for televisions.
  • Generic Words. A generic word can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify.

How to select a strong trademark?

As a trademark applicant, you should try your best to come up with a strong new trademark that is inherently distinctive. The strongest types of trademarks are (1) fanciful or coined marks, such as EXXON for petroleum products, KODAK for photography company; and (2) arbitrary marks, such as AMAZON for retail services, APPLE for computers, SHELL for gasoline, and BLACKBERRY for cell phones. 

There are many resources online that can help you with the naming process of your brand. For example, what we found on this website: https://guide.onym.co/ or the books like “Brand Thinking and Other Noble Pursuits.” Check out our other blog post on how to choose a business name here

If you need help with determining your proposed trademark’s strength, contact us today to discuss your trademark protection strategies with an experienced trademark attorney. Schedule an appointment with us to schedule a free initial consultation! 

The U.S. Customs and Border Protection (CBP), a bureau of the Department of Homeland Security, is the nation’s largest federal law enforcement agency that is charged with securing the nation’s borders and facilitating international travel and trade. It plays an underrated role in helping businesses enforce their intellectual property rights. Businesses may work with CBP to protect their intellectual property rights against counterfeiters. CBP has the authority to determine infringement of intellectual property rights at the US border and enforce intellectual property rights by excluding from entry, detaining, and seizing goods that infringe the business’s intellectual property rights such as trademarks, copyrights, and patents. How can CBP help with Intellectual property rights enforcement and fight against counterfeits? Intellectual property rights enforcement is complex and CBP relies on assistance from intellectual property rights owners to effectively carry out its enforcement authority. To obtain full CBP protection against the importation of goods bearing infringing trademarks, trademark owners should record their federally registered trademarks with CBP. Only trademarks registered on the USPTO’s Principal Register are eligible for CBP recordation. Common law trademarks and trademarks registered on the USPTO’s Supplemental Register cannot be recorded with CBP. It is important to record trademarks with CBP because CBP has no authority to prevent the importation of goods bearing a confusingly similar mark if the mark has not been recorded with the CBP. Therefore, even if the goods bear a mark that copies or simulates a mark registered with the USPTO, if the mark has not been recorded with CBP, the goods are not subject to detention or seizure. CBP and Counterfeits A counterfeit mark is a “spurious mark that is identical with, or substantially indistinguishable from,” a federally registered mark. CBP is obligated to seize and seek forfeiture of imported goods deemed to bear a “counterfeit” mark, whether or not the mark is recorded with CBP.  CBP has authority to seize goods bearing counterfeit marks because of the Tariff Act of 1930 and Federal Criminal Code, which provide for criminal penalties, including fines, against persons who intentionally traffic in counterfeit goods. CBP may impose a civil fine against any person who directs, assists financially or otherwise, or aids in the importation of goods bearing a counterfeit mark. Knowledge that the product is counterfeit is not required for civil liability. CBP also maintains the Intellectual Property Rights Search (IPRS) database, which contains information on recorded trademarks (as well as copyrights and trade names) and the IPRS database is available to the public. How can Intellectual Property Owners Effectively Work with the CBP  Here are a few steps intellectual property owners can take to increase the likelihood that CBP will discover and take action against infringements:
  1. Provide CBP with information regarding their trademarks and products (such as by making a product identification training guide and providing product identification training)
  2. Report suspected infringing imports to CBP
  3. Create and implement an intellectual property security plan
Navigating how you can work with the CBP to protect your company or product against counterfeits may seem daunting. It is always helpful to enlist the assistance of a professional intellectual property attorney. We are here to help you fully understand the benefits and details of working the the CBP to protect your intellectual property rights. Find out how Carbon Law Group can help you protect your intellectual property rights by scheduling a meeting with us using this link.  

Did you know that color, sound, scent, and hashtags can be protected by trademarks? 

Traditionally, trademarks are words or symbols used to identify the source of a product or service. Most trademarks are word marks such as COCA-COLA; or design marks/logos such as ; and slogans, such as Coca-Cola’s “It’s The Real Thing.”

However, the list of things that can be registered as trademarks under the Lanham Act is actually very broad. There are practically no limitations to the subject matter of registrable marks, so long as the mark is capable of acting as an identifier of source, whether because it is inherently distinctive, or it has acquired distinctiveness and the mark is not functional.

Here is a list of non-traditional trademarks: 

Color Mark

The registrability of a color mark depends on the manner in which the proposed color mark is used. Color takes on the characteristics of the object or surface to which it is applied, and the commercial impression of color will change accordingly. Color marks are never inherently distinctive, and cannot be registered on the Principal Register without a showing of acquired distinctiveness.

Color, whether a single overall color or multiple colors applied in a specific and arbitrary fashion, is usually perceived as an ornamental feature of the goods or services. However, color can function as a mark if it is used in the manner of a trademark or service mark and if it is perceived by the purchasing public to identify and distinguish the goods or services on or in connection with which it is used and to indicate their source. 

Sound and Scent Mark 

A sound mark identifies and distinguishes a product or service through audio rather than visual means. Sound marks function as source indicators when they “assume a definite shape or arrangement” and “create in the listener’s mind an association of the sound” with a good or service. Some famous sound trademarks include the iconic ticking of 60 Minutes’ stopwatch that CBS trademarked and the sound of a lightsaber, FYI, is described as “an oscillating humming buzz created by combining feedback from a microphone with a projector motor sound.”

Some scents that are protected by trademarks include the scent of Play-Doh, which is described as “a unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough;” and the “flowery musk scent” in verizon stores.

A trademark applicant that wishes to register a sound or a scent trademark is not required to submit a drawing if the mark consists only of a sound, a scent, or other completely non-visual matter.  For these types of marks, the applicant must submit a detailed description of the mark.

Hashtag Mark

A “hashtag” is a form of metadata consisting of a word or phrase prefixed with the symbol “#”. Hashtags are often used on social networking sites to identify or facilitate a search for a keyword or topic of interest. 

As hashtags became increasingly more popular on social media, in 2013 the United States Patent and Trademark Office (USPTO) recognized hashtags as registrable trademarks “only if [the mark] functions as an identifier of the source of the applicant’s goods or services.” The addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable mark typically will not render it registrable.

Some examples of hashtag mark the USPTO has granted registration include: 

#EVERYDAYMADEWELL for “online retail store and retail store services in the fields of clothing, footwear, bags, sunglasses, jewelry, watches, and fashion accessories”

#HOWDOYOUKFC for “restaurant services

#THESELFIE for “photography and videography equipment, namely, remote shutter releases

Unique challenges applicants of non-traditional trademarks face

Federal registration of trademarks generally confers certain benefits to the trademark owner However, non-traditional trademarks face unique challenges that traditional trademarks don’t face in registering with the USPTO. Non-traditional trademarks can take longer and cost more to register and in addition to the distinctiveness and non-functionality hurdles, challenges exist in clearing the marks for registration due to the complexity involved in searching Non-traditional trademarks on TESS; fulfilling technical requirements for registration involved in providing the appropriate drawing and specimens for marks that are not easily depicted on paper; and the unique unpredictability due to a lack of successful precedents to provide guidance. Even if it is registered, a non-traditional trademark may be difficult to enforce. Furthermore, the inherent challenges in searching non-traditional marks make it hard to monitor infringement of the mark. 

If you need help with your non-traditional trademark, contact us today to discuss your trademark protection strategies with an experienced trademark practitioner.

Judy Yen Judy Yen is an associate in Carbon Law Group’s Los Angeles office. She joined our firm in 2019 and her practice focuses on representing emerging companies in intellectual property and business transactional matters. Born and raised in Taiwan, Judy is a native speaker of Mandarin Chinese. She has used her international legal experience, […]

Answer: Only if you care about protecting your creative work.

We realize we set you up with a leading question, but the reality is, based on a recent Supreme Court ruling, it is more important than ever before to file for a copyright registration if you want to protect your creative work.

On March 4, 2019, the Supreme Court settled a split among U.S. Courts of Appeals regarding whether a copyright owner can sue for infringement before the Copyright Office grants registration in Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC.

This decision underscores the importance for copyright owners who expect to enforce their rights through litigation take early action to register their works with the Copyright Office before any claim arises.

The Copyright Act of 1976 gives copyright protection to “original works of authorship fixed in any tangible medium of expression,” and copyrights vest as soon as the original work was created and reduces to a tangible medium (such as put in writing, saved on a hard drive, recorded on tape, etc.).

Copyright owners have the exclusive right to (a) reproduce their original work; (b) distribute such work; (c) publicly display or perform the original work, and (d) create derivative works of the original work. And they can prevent other people from exercising those rights during the duration of the copyright.

However, 17 U.S.C. §411(a) conditions that “no civil action for infringement of the copyright in any United States work shall be instituted until…registration of the copyright claim has been made in accordance with this title.” In plain English, this means that if the original work has not yet been copyrighted, the owner cannot sue for copyright infringement.

Fourth Estate Public Benefit Corporation (“Fourth Estate”), a news organization, sued Wall-Street.com and its owner (“Wall-Street”) for copyright infringement after Wall-Street failed to remove Fourth Estate’s news articles from its website despite having canceled the parties’ license agreement. Fourth Estate had filed applications to register the articles with the U.S. Copyright Office. Yet, the Register of Copyrights had not acted on those applications before Fourth Estate filed the suit.

The parties disputed the meaning of “registration” in §411(a). Fourth Estate argued but failed to convince both the U.S. District Court and the Eleventh Circuit court, that “registration” for the purposes of §411(a) occurs when a copyright owner submits the application, materials, and payment to the Copyright Office. Both lower courts held that registration of copyright hasn’t been made until the Copyright Office acts. Justice Ruth Bader Ginsburg delivered the opinion for a unanimous Supreme Court that affirmed the lower courts’ decisions, holding that “registration” in §411(a) “refers to the Copyright Office’s act of granting registration, not to the copyright claimant’s request for registration.”

However, the statute provides several exceptions to the general rule that registration occurs, and a copyright claimant may commence an infringement suit when the Copyright Office registers the copyright. For example, owners of material susceptible to pre-distribution infringement, such as movies or musical compositions, can apply for preregistration, a limited review of the application after which the copyright owner may commence an infringement suit.

Thus, this case clarifies that generally a copyright owner only may bring an infringement suit after the Copyright Office grants registration. If authors and content creators do not register their works early, they may not be able to enforce their rights in courts right away when infringement takes place.

By Judy Yen, Loyola Law Student and Law Clerk with Carbon Law Group

When starting a company, your brand is of your most valuable assets. However, an often overlooked area of creating and launching a brand is trademark protection.

Entrepreneurs often wonder whether it is worth filing for a federal trademark. While you establish some rights the moment you start using a brand, there are significant advantages to registering your name, logo, or packaging design.

Here are nine advantages to filing for and obtaining federal trademark protection on the Principal Trademark Register:

  1. Prima facie evidence of validity and the registrant’s ownership of the mark.
  2. Constructive nationwide use of the mark.
  3. Federal court subject matter jurisdiction over infringement and other trademark claims without a showing of diversity or minimum amount in controversy.
  4. Statutory remedies for federal trademark infringement claims, including, under certain circumstances:
    • treble damages; and
    • recovery of attorneys’ fees and costs.
  5. Constructive notice of ownership, which eliminates the defenses of good faith use and innocent adoption.
  6. The right to use ® and other notices of federal registration.
  7. After five years the registration may, subject to limited exceptions, become incontestable and be deemed conclusive evidence of the owner’s exclusive rights to use the mark.
  8. A registration may be recorded with US Customs to stop the importation of infringing, counterfeit, and gray market goods.
  9. A registration may provide a basis for registering the mark in foreign countries.

Not all trademarks will qualify for the Principal Register. However, understanding your options and the best ways to register and protect your brand is a worthwhile investment. Contact us today to discuss your brand protection strategies with an experienced trademark practitioner.

 

We recently returned from our first firm trip to the Consumer Electronics Show (CES) in Las Vegas, Nevada–and what a trip it was.

For those of you who are not familiar with CES, it is the world’s largest consumer electronics show in the world. The estimated attendance over the five days is around 300,000 people.

CLG decided to make the trip this year to meet prospective clients and get an understanding of what the future holds for our current clients in the consumer electronics space. The trip ended up a great success and certainly eye-opening.

While we provided a play-by-play on our Instagram feed (@carbonlg), we thought it would be helpful to provide a few important take-aways here for our those thinking about attending. Here are some insights we gained that may be of interest:

  1. Get ready to be overwhelmed. There is just too much to see in the time you are there. Plan your trip ahead of time and get an idea of what are the types of technology you find most interesting.
  2. Wear comfortable shoes. CES is spread out over several convention centers. Great ready to walk–a lot. 
  3. Book your accommodations early. Hotel rooms fill up early and the prices are super-inflated. Try to lock something down as early as possible.
  4. Get to the official CES parties super early. We attempted to attend the opening party at Omnia nightclub, but we quickly changed our minds when we realized the line to get in was about 300 yards long. It was insane. We ended up at a private Google party, which was very cool and surprisingly empty. Many of these larger companies host private parties at locations they don’t come close to filling. We were able to get into some great events by simply asking nicely.
  5. Think about how these new technologies will impact your industry. Every industry is going to be affected by the coming technologies featured at CES. From blockchain to AI to autonomous vehicles, there is a lot to be both excited and slightly concerned about.

Key takeaway: technology will be disrupting industries like never before in the next 10 years. CES provides a valuable glimpse into all the new and interesting ways technology will play a role in our lives in the future. Whether this is a good thing or a bad thing is something worth considering as we must also weigh the effects technology will have our well-being and mental state.

Something to ponder: In an increasingly digital world, how important are analog experiences?

Every year, about ten to eleven thousand trademark attorneys and service providers converge on a major city to network, exchange ideas, and review the previous years’ developments in the world of trademarks. It is an exciting time for a trademark practitioner.
 
I had the good fortune of attending this years’ INTA convention in Seattle, Washington. It was four days of shaking hands, meeting new colleagues, and enjoying the several social events taking place each evening. I must say, of the various specialties in law, trademark lawyers know how to have a good time.
 
Every INTA is different for a variety of reasons. The location makes a huge impact on how you will attend the event. This year, given the conference was on the same coast as me, I had little reason not to attend. In the past, I have made it a point to attend many panel discussions and “lunch and learns,” where we break out into small groups to discuss timely topics in trademark law such as “Protecting Well-Known Marks,” “Protecting Domain Names,” and more. The most popular panel, however, takes place on the last day of the conference and is hosted by Ted Davis and John Welch, all-stars in the world of trademarks. Mr. Welch always makes his review entertaining, with the crowd in stitches many times throughout his presentation. Some of the key takeaways from this year were:
 
  • The number of 2(d) likelihood of confusion reversals granted by the Trademark Trial and Appeal Board was minuscule
  • Perhaps the most discussed decision was the Matal v Tam case which ruled that the prohibition under section 2(a) of the Lanham Act of the federal registration of potentially disparaging trademarks and service marks violated the Free Speech Clause of the First Amendment because the viewpoint was discriminatory and therefore subject to strict scrutiny.
  • The TTAB affirmed its refusal to register KLEER ADHESIVES for adhesives and mortar on the basis that the applicant’s goods were not transparent
  • In a case involving Dr. Dre, or Andre Young, the TTAB dismissed his opposition to Dr. Drai, an OBGYN and Media Personality citing there was no evidence of confusion between the marks and that the goods and services were unique enough to not cause confusion in the marketplace
The above highlights are but a few of the important decisions that change the way trademark practitioners must view and evaluate trademarks going forward.
 
Beyond a great review of current trademark decisions and meeting wonderful colleagues, we had a great time taking in the beautiful sights of Seattle.
 
For more information on how to create a strong brand and ensure it is protected, please email us at [email protected]17.info or schedule an appointment to chat today!
 
P.S. I cannot forget to thank the awesome team at AltLegal for hosting me this year. If you are looking for a new docketing system for your practice, I highly recommend them. Yes, full disclosure, I am a recent investor, but I have been a big fan of what they are doing long before I decided to invest.

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