Category Archives: Trademarks

Basic Questions – Differences between Copyrights and Trademarks

by Christina Frangiosa

While it seems that this topic may be rather basic, the differences between types of protection under the broader heading of “intellectual property law,” are commonly confused. Not only have I been asked this question directly, but also I have heard folks frequently using the words “copyright,” “trademark” and “patents” interchangeably. These terms have very separate meanings, however, and the doctrines and black letter assumptions applicable to each are very different.

(Note that because I do not practice in the area of patent law, I am omitting patents from this discussion. Recognize, however, that patent law is a pivotal component of the larger intellectual property law environment and should not be ignored when considering what protections to pursue for various intellectual property assets.)

Copyrights (17 U.S.C. § 101 et seq.)

In a nutshell, U.S. copyright law protects an “original work of authorship fixed in a tangible medium of expression” from being copied and/or used by others. The phrase “works of authorship” generally refers to creative works such as books, movies, scripts, computer software, sculptures, paintings, music, and lyrics, although myriad other works are also covered.
What is protected is the expression itself, not the idea underlying the expression. As a result, if you wrote a book that describes a conflict between two family members, you could not prevent another author from writing a book that also describes such a conflict. If the new book copied your precise language (in whole or in significant part), you might have some remedies against infringement under the Copyright Act – but note that what is protected is the way that you expressed the idea, not the underlying idea itself.

Trademarks (15 U.S.C. § 1051 et seq.)

Generally, trademark law protects words, symbols, logos, sounds and other mechanisms of identifying brand names. The key to determining whether a particular mark has trademark value is whether or not consumers recognize it as identifying a single source of goods or services in the market. As a result, “use” of (or a bona fide “intent to use”) the mark in connection with particular goods or services governs the scope of the mark’s protection.

If a term is generic, it cannot act as a trademark or achieve federal registration, lacking any value as an indicator of source of goods or services. Beyond generic terms, various types of marks can be registered if certain circumstances exist, requiring an analysis of the underlying facts. A sliding scale describes the strength of these types of marks, ranging from merely descriptive on the one side (moderately strong source indicators) to arbitrary or fanciful on the other (very strong source indicators), with descriptive and suggestive marks falling in the middle.

How do Domain Names Fit into these Definitions?

Domain names are simply addresses at which a user of the Internet can locate a particular web site. They can be equated to mailing addresses or even 1-800 phone numbers and typically appear in a www.name.com or www.name.net (etc.) format. The domain names may contain trademarks or they may contain more generic or descriptive terms.

When a domain name contains a trademark owned by another, the trademark owner has several options to enforce his or her rights, including negotiations with the domain name owner, other pre-litigation strategies or ultimately, filing claims in either federal court (pursuant to the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125) or through a domain name dispute resolution provider (pursuant to the Uniform Dispute Resolution Policy). Which forum is appropriate in a particular case depends on an analysis of the specific circumstances, but each option has specific benefits and detriments to proceeding within its boundaries.

Future blog entries will be based on new developments in these areas. Please let me know if you have comments or questions.

White House appoints IP Enforcement Coordinator

by Christina Frangiosa

On September 25, 2009, President Obama appointed Victoria A. Espinel as IP Enforcement Coordinator (“IPEC”). This position was mandated by the Prioritizing Resources and Organization for Intellectual Property Act of 2008 (“PRO-IP Act”) S. 3325, Public Law No. 110-403, signed into law by President George W. Bush on October 13, 2008. See Current Status of the House Bill and of the Senate Bill.

The Act governs enforcement of IP infringement matters, particularly counterfeiting of copyrighted works and trademarks. With respect to trademarks, the Act increases civil penalties for trademark counterfeiting, including for direct as well as for certain types of contributory infringement and enhances criminal penalties for trafficking in counterfeit goods bearing others’ trademarks.

The IPEC is a cabinet-level position in the Executive Office focused on combating counterfeiting and IP infringement.

Under the Act, the IPEC will be an advisor only, not a prosecutor or other law enforcement officer. Specifically, the IPEC is charged with chairing an “interagency intellectual property enforcement advisory committee”, coordinating a Joint Strategic Plan (defined with more specificity in the Act) against counterfeiting and infringement, assist (when requested) in the implementation of the Plan, facilitate the issuance of policy guidance on “basic issues of policy and interpretation, to the extent necessary to assure the coordination of intellectual property enforcement policy and consistency with other law,” report to the President and to Congress about IP enforcement programs, report to Congress about the implementation of the Plan, and “carry out such other functions as the President may direct.” Public Law No. 110-403 § 301(b)(1).

Note that the Act was signed into law nearly a year ago. Under the precise terms of the PRO-IP Act, the Joint Strategic Plan described in the Act was due to be completed and submitted to various House and Senate committees no later than October 13, 2009 – in other words, two days ago!

However, given that the appointment has just been made for the IPEC, the various deadlines set forth in the act must be modified in some manner. It will be interesting to see how much the deadlines change.

For more information, see the following:

* White House Press Release, “President Obama Announces More Key Administration Posts,” September 25, 2009. The press release describes Ms. Espinel’s background and qualifications for the position.

* Official Summary of the Senate version of the bill (which ultimately was signed by Pres. Bush in 2008)

* Wikipedia’s description of the PRO-IP Act

* “FAQ: What to expect from a new IP cabinet position,” CNET News, Sept. 30, 2008 (just before the Act was signed into law).

Ms. Espinel’s nomination was received in the Senate on September 29, and the matter has been referred to the Senate Committee on the Judiciary. Nomination PN1027-111. It does not appear that a confirmation hearing has yet been scheduled.

Federal Circuit Clarifies Fraud Standard for Cancelling Trademark Registrations

by Christina Frangiosa

On August 31, 2009, the U.S. Court of Appeals for the Federal Circuit reversed the Trademark Trial and Appeal Board’s (“the Board”) 2007 decision cancelling Bose’s federal Trademark Registration for its mark WAVE in connection with “radios, clock radios, audio tape recorders and players, portable radio and cassette recorder combinations, compact stereo systems and portable compact disc players.” See In re Bose Corporation, Appeal No. 2008-1448, slip op. (Fed. Cir. Aug. 31, 2009). More importantly, however, the Court removed the threat of cancellation of a registered trademark if a registrant mistakenly included goods or services in its application (or requests for renewal) on which the mark was never used, or which the registrant had stopped using. The key to this analysis was the Court’s return to the “knowing” requirement in fraud pleadings, instead of the current “knowing or should have known” standard.

In the underlying case, the Board found that Bose had submitted a false sworn affidavit of continued use in support of the renewal of its Registration. Having found falsity, the Board further held that cancellation of this registration was appropriate because Bose “should have known” that the affidavit was false with respect to “audio tape recorders and players,” and was thereby attempting to defraud the Trademark Office by submitting it. (The Board recognized that the mark continued to be used in connection with the remaining goods covered by the Registration and only focused on the affidavit with respect to these few goods.) See Bose Corp. v. Hexawave, Inc., Opposition No. 91/157,315, 88 USPQ2d 1332 (TTAB Nov. 6, 2007). More information about the underlying case and the Medinol line of cases can be found at these prior posts.

In reversing the Board’s decision, the Court held that the Board erred when it relied on a lower standard to prove fraud in obtaining or maintaining a trademark registration as set forth in the Board’s 2003 decision in the Medinol case and when it cancelled the Registration for this mark in its entirety. The Court remanded the case for further proceedings to narrow Bose’s registration to “reflect commercial reality,” presumably to remove the goods on which the mark is no longer used in interstate commerce (specifically “audio tape recorders and players”). Bose, slip op. at 11.

Through this single opinion, the Court has accomplished that which practitioners have sought in various fora since 2003. See Medinol Ltd. v. Neuro Vasx, Inc., Cancellation No. 92040535, 67 USPQ2d 1205 (TTAB May 13, 2003). Specifically, while practitioners may generally agree that the Principal Register (cataloging active trademark registrations) should be culled periodically of those marks that are no longer in use in commerce, it has been argued that cancelling an entire registration – even longstanding and valuable registrations – as punishment for the registrant’s carelessness rather than permitting the registrant to amend the registration to remove outdated items was Draconian. See U.S. Patent and Trademark Office, Public Advisory Committee Meeting, Transcript at 137-42 (Feb. 20, 2009) (one panelist suggested that using cancellation for fraud as a punishment for these types of mistakes was akin to imposing the “death penalty” for a traffic violation).

Now, apparently, such amendments may be permitted.

Standard to Find Fraud on the Trademark Office

In order to support the cancellation of a registration based on the claim that the “registration was obtained [or maintained] fraudulently” (15 U.S.C. § 1064(3)), a court must find that the applicant “knowingly [made] false, material misrepresentations of fact in connection with his application.” Bose, slip op. at 3 (quoting Torres v. Cantine Torresella, S.r.l., 808 F.2d 46, 48 (Fed. Cir. 1986)). The Court confirmed that a “heavy burden of proof” is required and that the party seeking cancellation has to prove the allegation of fraud “to the hilt” through clear and convincing evidence. Id. (“There is no room for speculation, inference or surmise and, obviously, any doubt must be resolved against the charging party.”).

The Court focused on the Board’s conclusion that Bose “should have known” that its renewal affidavit was false and held that the Board’s prior opinion in the Medinol case changing the standard from “knew” to “should have known” (on which the Board relied in the Bose case) improperly reduced the standard to that of ordinary negligence. Id. at 5-6. In addition, finding that an applicant’s conduct constituted “mere negligence” or even “gross negligence” would be insufficient to meet the proof requirement for fraud. Instead, a subjective “intent to deceive” is an indispensible element of the claim. Id. at 6-8.

In sum, “a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.” Id. at 7 (emphasis added). Fraud does not exist when false statements are “occasioned by an honest misunderstanding or inadvertence without a willful intent to deceive.” Id. at 10 (citations omitted).

Applying the Proper Standard to the Bose Registration

Applying the rule to the case at bar, the Court determined that this “intent to deceive” was absent and credited the testimony of Bose’s general counsel that he believed that repairing previously-sold tape players and shipping them back to consumers constituted “use in commerce” sufficient to support the renewal when he signed the affidavit in 2001. Id. at 9. While the Court declined to reach the issue of whether this belief was “reasonable,” the Court noted that no prior decision had been issued that found the repair/return activity to be insufficient to prove use of the mark in commerce. Id. at 9 n.2. As a result, Bose’s general counsel had not ignored prior legal precedent in submitting his affidavit.

Applying the Proper Standard to Prior “Fraud on the PTO” Cases

Not only did the Court confirm that a “knowing” misrepresentation and intent to deceive are required to support a fraud allegation, but it also clarified that “honest misunderstandings” or “inadvertence” in sworn statements made in connection with trademark applications or renewals do not constitute fraud in the absence of proof of a willful intent to deceive the Trademark Office.

This clarification is significant, particularly in light of the many decisions by the Board to cancel a registration or affirm the refusal of registration in reliance on the “should have known” standard articulated in its opinion in Medinol. One could argue that the Federal Circuit’s opinion in Bose effectively overturns many of these decisions.

Certainly, applicants could rely on the Bose opinion to seek to amend their registrations to reflect commercial reality where they can demonstrate that mistakes in their sworn statements about whether a mark is or continues to be used in commerce were inadvertent or the result of honest misunderstandings, a result which Medinol would have precluded.

Proposed Legislation to Address Perceived Misidentification of Geographic Source of Goods

by Christina Frangiosa

On July 31, 2009, Representative Daniel B. Maffei (D-NY) introduced H.R. 3499, to be called the “Trademark Protection Act” in the House of Representatives. The Bill purports to assess civil liability for unfair competition in the form of misleading the public as to the geographic source of a particular product. This provision would amend Section 1125(a)(1), which prohibits “False designations of origin, false descriptions and dilution” in the use of trademarks in commerce in the U.S. 15 U.S.C. § 1125(a)(1).

Apparent Objection to Relocating Manufacturing to China

Among the findings Rep. Maffei proposes, he explains why he introduced the Bill: “Syracuse China was an upstate New York manufacturer in the city of Syracuse. The company was founded in 1871 as the Onondaga Pottery Co. and was one of the last major china makers in the U.S. On April 9, 2009, after more than 130 years in business, Libbey Inc. (of Toledo, Ohio) halted production in Syracuse, eliminating 275 local jobs. Libbey plans to continue selling dinnerware under the name ‘Syracuse China’ even after they stop production at the New York-based plant, but the company will manufacture the product in other countries and import them into the U.S.” H.R. 3499 § 2 (3).

It appears that the Syracuse China Company (which appears to be a different legal entity than the one identified in Rep. Maffei’s Bill) owns a valid registration in the word SYRACUSE, standing alone, which is registered in connection with “China tableware and ornamental chinaware” (Reg. No. 104,744, registered in 1915, alleging a date of first use in 1897). The registration was renewed in 2005, and could be asserted against a different company seeking to confuse consumers about the source of the goods sold in connection with a confusingly similar mark. (That being said, it’s possible that the Libbey Company referenced in the Bill is somehow affiliated or related to the Syracuse China Company such that litigation would not be considered.)

Indeed, it appears that at one time, predecessors of the Syracuse China Company registered variations of the mark “SYRACUSE CHINA” and then let the registrations lapse. Specifically, the following three registrations are marked “dead” in the U.S. Patent & Trademark Office’s database – and therefore cannot be asserted in litigation against some one else’s actual use of the mark in commerce:

* SYRACUSE CHINA (& design), Reg. No. 734,163 applied to “dinnerware and tableware made of China” and was registered in 1962 (alleging a date of first use in 1961). The registration was deemed abandoned in 1987 when the registrant failed to renew it.

* SYRACUSE CHINA 1871 (& design), Reg. No. 841,235 applied to “dinnerware and tableware made of China” and was registered in 1967 (alleging a date of first use in 1966). The registration was deemed abandoned in 1989 when the registrant failed to renew it.

* SYRACUSE CHINA CORPORATION (& design), Reg. No. 975,004 applied to “dinnerware and tableware made of China” and was registered in 1973 (alleging a date of first use in 1972). The registration was deemed abandoned in 1994 when the registrant failed to renew it.

Protection of “Weak” Marks

Also interesting about this proposed Bill is the following draft “finding:” “Trademarks that describe some feature or quality of the goods or that are based on someone’s name or a geographic term are considered to be ‘weak’ and thus are not protectable under trademark law. However, once the trademark owner can demonstrate substantial sales, advertising or other public awareness of a weak trademark, the trademark will be considered distinctive and can be registered with the [US Patent & Trademark Office].” H.R. 3499 § 2 (2).

The statement that “weak” marks are not protectable under U.S. trademark law perhaps goes too far, and despite the second sentence of these draft findings, suggests that these marks may never be protectable. Certainly, in any litigation or other dispute involving a “weak” mark, the parties will debate whether the owner of that mark has demonstrated secondary meaning or acquired distinctiveness, such that the consuming public would automatically associate such a “weak” mark used in connection with the relevant goods or services with the owner of the mark – in other words as a “source indicator”. Descriptive marks such as these can acquire distinctiveness and obtain a level of trademark protection that seems to somewhat be undervalued in the draft “findings” in this Bill.

In addition, this Bill appears to focus only on the ability to register a trademark with the U.S. Patent & Trademark Office. Under U.S. law, trademarks can be protected from misappropriation and confusingly similar use by someone else based on the actual use of the earlier mark in commerce. There is no requirement that every trademark be registered before protection from infringement is available. Instead, senior rights may even exist for unregistered marks in certain circumstances. Notably, the Bill contemplates amending the civil liability provisions relating to marks that are either registered or unregistered – including those known as “common law marks”.

There are definitely benefits to filing an application for trademark registration – including the presumption that the registrant can expand the use of its mark nationwide on the goods or services described in the registration. Even the U.S. Patent & Trademark Office will only register a mark if there has been bona fide use in U.S. commerce, as demonstrated by evidence submitted by the applicant through the application process. See Trademark Manual of Examining Procedure (“TMEP”) § 901.01 (quoting statutory language: “The term ‘use in commerce’ means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”).

In addition, even after registration, if a registrant stops using the mark in U.S. commerce, the registration can be cancelled or narrowed to only those goods or services on which the mark continues to be in active use. See TMEP § 1604.10 (explaining requirements to maintain a registration, which will be cancelled if continued use cannot be demonstrated).

Conclusions

Upon introduction, the Bill was referred to the House Committee on the Judiciary. At present, no hearings are scheduled for the Bill. It is unclear whether there will be any further action taken on the Bill.

It also appears that this issue of misidentification of geographic source of origin might not be a pivotal issue for Rep. Maffei. Press releases relating to the various legislative initiatives that he has sponsored or speeches that he has delivered are available on his web site, but none of them relate to this Bill (at least, none had been posted at the time that this blog entry was prepared). Instead, the only relevant reference appears to be Rep. Maffei’s June 23rd announcement that the Syracuse China Company was eligible for Trade Adjustment Assistance.

Current status of the Bill can be found through the legislature’s search service, Thomas.gov.

Fraud on PTO Refusal is not Obviated by Lack of Counsel; Amendments Cannot Expand Goods Sought to be Covered

by Christina Frangiosa

Updating a prior post: Fraud on the PTO Jurisprudence: Further Approval for Timely Corrective Action to Avoid Cancellation

On June 25, 2009, the TTAB issued another opinion in its “Fraud on the PTO” jurisprudence. Esprit IP Limited v. Mellbeck Ltd, Opposition No. 91189412 (TTAB June 25, 2009) [not precedential]. In this case, Applicant (Mellbeck) filed an application seeking trademark registration for the following goods:

Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Belts; Bibs not of cloth or paper; Caps; Children’s and infants’ cloth bibs; Children’s cloth eating bibs; Cloth bibs; Cloth bibs for adult diners; Cloth bibs for use by senior citizens or physically- or mentally-challenged persons; Cloth diapers; Clothing for wear in judo practices; Clothing for wear in wrestling games; Clothing, namely, arm warmers; Clothing, namely, folk costumes; Clothing, namely, hand-warmers; Clothing, namely, khakis; Clothing, namely, knee warmers; Clothing, namely, neck tubes; Clothing, namely, throbes [sic]; Clothing, namely, wrap-arounds; Corsets; Dusters; Foulards; Hoods; Infant and toddler one piece clothing; Infant cloth diapers; Jerseys; Leather belts; Mantles; Mufflers; Nondisposable cloth training pants; Paper hats for use as clothing items; Parts of clothing, namely, gussets for tights, gussets for stockings, gussets for bathing suits, gussets for underwear, gussets for leotards and gussets for footlets; Perspiration absorbent underwear clothing; Shifts; Short sets; Shoulder wraps; Swaddling clothes; Ties; Tops; Travel clothing contained in a package comprising reversible jackets, pants, skirts, tops and a belt or scarf; Triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits; Underarm clothing shields; Wearable garments and clothing, namely, shirts; Wraps.

The application passed initial review by the Examining Attorney without Office Actions or Examiner’s Amendments, and was published for opposition on December 2, 2009. See Full File, including Notice of Publication dated November 12, 2008.

Opposition Filed

Esprit IP Limited (“Opposer”) opposed the application on March 23, 2009, alleging that it was filed fraudulently (among other claims) and requested that registration be refused. Notice of Opposition ¶ 21.

In its answer, Applicant conceded that it “does not sell in the US all of the apparel products listed in the application” for this mark. Answer ¶ 17 (admitting Opposer’s allegation on this point without modification).

Attempts to Modify the Description of Goods

Shortly thereafter, Opposer moved for judgment on the pleadings on several of its claims, including on the fraud claim. In response, Applicant responded to the motion, admitting its error in drafting the description of goods, and filed a motion to amend the description in an attempt to fix the problem. The amendment it requested was:

Clothing, namely, fleece jackets, t-shirts, ski masks, helmet liners, neck warmers, socks, thermal underwear, windcheaters, base-layers, thermal gloves, undersuits, longjohns, sweaters, [and] hats.

In general, the USPTO might accept a modification to the description of goods or services covered by a particular application, but only if the modification is narrower than the original filing; the USPTO will not accept a broader description or one that deviates completely from the original as filed. 37 C.F.R. § 2.71(a) (“The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.”) (emphasis added); TMEP § 1402.06. Should an applicant wish to obtain a registration for the mark as applied to goods or services beyond the original description, it may only do so by filing a new application to cover the new goods or new services.

Unfortunately for Applicant, however, both Opposer and the TTAB recognized that this modified description had only one product in common with the original description: hats. Opinion at 3-4. The rest of the description covered brand new products. The TTAB denied the motion to amend, rejecting the new expanded description, concluding that it was “unacceptable because it designates goods that are outside the scope of the identification as set forth in the application as filed.” Id. at 3 (citations omitted).

Reliance on Lack of Counsel to Defend Against the Fraud Claim

In attempting to change its description completely, Applicant lamented that it was “not represented by an attorney and has no prior experience in United States trademark matters” and therefore argued that it should be excused from liability for having submitted a completely false description of goods used in connection with the mark. Id. at 5. In prior cases, however, the TTAB expressly rejected an applicant’s attempt to rely on the advice of counsel, or to hide behind its lack of counsel, in an effort to avoid refusal/cancellation of its application/registration due to fraud. See Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc., Cancellation No. 92045172, 86 USPQ2d 1572 (TTAB Mar. 7, 2008) [precedential] (precluding client from relying on the advice of counsel as a defense to a fraud claim); Tequila Cazadores, S.A. De C.V. v. Tequila Centinela S.A. De C.V., Opposition No. 91125436 (TTAB Feb. 24, 2004) [not precedential] (refusing to recognize a defense of lack of counsel to a claim of fraud). Here, the TTAB held that “[t]he fact that applicant is a foreign entity that is representing itself without previous experience in United States trademark procedure cannot avoid a finding of fraud.” Opinion at 8.

Instead, it is incumbent upon applicants to be fully informed about the truth of their statements made under oath and to understand the implications of giving such a declaration in connection with their applications for trademark registration. See Hacehette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, 85 USPQ2d 1090 (TTAB Apr. 9, 2007) [precedential]; Hurley Int’l LLC v. Volta, Opposition No. 91158304, 82 USPQ2d 1339 (TTAB Jan. 23, 2007) [precedential].

TTAB Refused Registration

Ultimately, in the Esprit case, the TTAB found that “[b]y setting forth an identification of goods for more than fifty goods, when applicant was not using the mark on all of these goods, and indeed may have been actually using the mark only on one of those identified goods, applicant made a material misrepresentation of fact that the [USPTO] relied upon in determining applicant’s right to registration.” Opinion at 8. The TTAB granted Opposer’s motion for judgment on the pleadings and refused registration to Applicant. Id. at 9.

Lessons Learned

Finally, while this case may not be cited as precedent in other cases, it should suggest the following lessons for applicants: 1) descriptions of goods and services can only be narrowed during examination; 2) applicants cannot file applications based on “use in commerce” in connection with goods or services on which they have not actually used the mark in question; and 3) applicants cannot rely on the lack of counsel or claimed misunderstandings of the requirements of U.S. trademark law to avoid refusal or cancellation based on this doctrine.