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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.

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