By: Suzan Hixon and Brittany Riley
Trademarks usually encompass words, logos, and images that are used to identify the source of a product or service. They appeal to our visual sense and our ability to relate what we see as an identifier. However, the scope of trademarks has been expanded to include four of the five senses: hearing, sight, touch, and smell. Companies have successfully registered sound, motion, texture, color, fragrance, product shape, and product packaging through the United States Patent and Trademark Office.
Some sounds automatically register with us as belonging to a certain product. A certain sound of a quacking duck immediately makes us think of Aflac. “Yahoo!” sung in a yodeling style causes us to picture an internet search engine. Although there are numerous sounds that are associated with certain services and products, not just any sound can be registered. Additionally, the sound cannot be commonplace in that it is normal in the course of operation. The sound must have an “acquired distinctiveness” in that it must be unique and distinctive. A distinctive sound is one that is capable of distinguishing the goods or services upon which it is used from the goods or services of others.
Motion marks on television and websites can be a very effective marketing tool. Unfortunately, researching motion trademarks in the United States can prove difficult. Although not much information exists regarding registering motion trademarks in the United States because it is rare, motion trademarks may be easier to register than sound trademarks because registrants do not have to prove acquired distinctiveness. The difficulty in registering a motion is in producing the drawings required by the USPTO.
Motion marks also include holograms. A hologram is used to perform the trademark function of uniquely identifying the commercial origin of products or services. In order to register a hologram as a trademark, there must be evidence that consumers would perceive it as an indicator of source. This standard is hard for trademark applicants to meet because the common use of holograms for non-trademark purposes means that consumers are less likely to perceive the use of holograms as trademarks.
Unlike a motion trademark, to register a texture trademark the registrant must prove that the mark has an acquired distinctiveness. However, a texture trademark has an additional requirement that may lead to difficulty in registration: the texture being registered cannot be a functional feature of the product. For instance, The David Family Group, LLC was able to register a mark that consists of a leather texture wrapping around the middle surface of a bottle of wine. On the other hand, the maker of BAWLS soft drinks was unable to register the bumpy textures of its bottles because the “bumps” served as grippers to keep the bottle from slipping out of consumers’ hands.
In the past, color, by itself and not as part of a design, has been considered incapable as serving as a trademark. The USPTO relied on numerous reasons for this conclusion, mainly mere functionality. Color was viewed as an enhancer of the aesthetic quality of the object or design. These conclusions regarding color marks still remain in some instances; however, a color mark can be registered if it consists solely of one or more colors and is not functional. A color will be deemed functional if it has a utilitarian advantage/purpose, is more economical, or is aesthetically pleasing and helps to improve the salability of a good or service. Companies such as UPS and Christian Louboutin have successfully registered color marks.
Successful registration of scent marks in the United States has been limited. The doctrine of functionality is the main reason for the restricted registration of fragrances. A seminal case allowed for the registration of scented sewing thread and embroidery yarn; however, at the time of registration, no other company had ever offered these products for registration. Recently, Amyris Biotechnologies, Inc. registered the citrus scent for biofuel.
With ever-changing technology, the registration of non-conventional trademarks is prevalent. Although the requirements for registration can be difficult to achieve, registration of such trademarks is important in protecting entrepreneurs’ rights to their products. The creation of new technology will allow us to see how far trademark protection will span; however, the definition of trademark inherently allows for a wide range of protection and flexibility.
By: Suzan Hixon and Brittany Riley
We usually immediately think of designer purses, shoes, and electronics when talking about counterfeit goods. In the case of logos and brands, counterfeiting results in trademark infringement. However, the illegal imitation of products is expanding to food and drink. Recently, a renowned wine dealer, Rudy Kurniawan, was arrested for auctioning 84 bottles of counterfeit wine purporting to be from Domaine Ponsot in Burgundy, France, which were expected to sell for approximately $600,000. Prosecutors maintain that the wine was not authentic. Unfortunately for Mr. Kurniawan, the crime he is charged with is serious, as the bad-faith sale of any commodity that is known to be a counterfeit, fake or forgery is a felony.
Unfortunately, instances of “label fraud” are not new to the wine industry. Label fraud is where counterfeit labels from cult wines and other rare and expensive wines are affixed to bottles of less expensive wine and then resold. During the 1980s and 1990s, wine collector Hardy Rodenstock was infamous for selling fake “Jefferson bottles,” rare Bordeaux wines bottled for American President Thomas Jefferson.
At the surface, counterfeit wines seem to only hurt the buyer; nevertheless, label fraud can have serious repercussions for the wine market as a whole. For instance, the presence of counterfeit wines in the market has the greatest potential to impact the wine industry in the areas of financial loss, damage to brand reputation, and liability. The potential cost to vintners has caused them to look to new technologies—from security inks to micro-chipped corks to laser-coded bottles—in order to protect their brands from fraud. Other producers have worked with printers to develop graphics or micro-printed multicolored codes that are only visible with magnification. Some vintners even use holograms or unique etchings on their bottles.
The expansion of fraud within the wine industry can serve as a lesson to all trademark owners. Expanding technology will allow counterfeiters to copy almost any product, especially luxury and high-end products. Trademark owners who are worried that their product will be subject to counterfeit techniques can learn from the wine bottling and labeling industry by applying protective techniques to their own products. The use of micro-chips, microprinted multicolored codes, and holograms can be applied to various products depending on the material and cost. Although the methods used by vintners to protect their brands from fraud may seem expensive and excessive, it evidences how costly and damaging counterfeit products can be to the success of a brand and/or an entire industry.
By: Suzan Hixon and Brittany Riley
Trademark law is a heavily regulated field. Those wishing to register a mark must file an application and respond to an Office Action detailing certain issues with their mark that may prevent registration. However, regulation of trademarks extends far beyond the process of registration in that Section 2(a) of the Trademark Act, 15 U.S.C. 1052(a), is an absolute bar to the registration of immoral or scandalous matter. Case law has defined such matter as that which is shocking to the sense of propriety and offensive to the conscience or moral feelings or calling out for condemnation. For instance, immoral or scandalous matter is that which would be regarded as vulgar by a substantial component of the general public. This analysis includes consideration of who the likely viewers. If an applicant seeks registration of mark that will be in viewed in grocery stores, then the USPTO examining attorney may consider whether parents shopping with their children would find it inappropriate to expose their children to such a mark.
A number of applicants have been found to be in violation of this provision. Most notable are the musical group, LMFAO, and lesbian motorcycle club, “Dykes of Bikes.” In 2003, the San Francisco Women’s Motorcycle Contingent filed an application for the mark DYKES ON BIKES. The group was sent numerous Office Actions and filed responses to each. In 2006, the organization won the battle to trademark DYKES ON BIKES,” having struggled for 3 years to persuade the PTO that the element “dyke” was not offensive to the lesbian community. This success was achieved after a prolonged court battle involving testimony on the word’s changing role in the lesbian community, thus the Trademark Trial and Appeal Board permitted the group to register its name. In the same manner and more recently, the electronic pop group, LMFAO, struggled to trademark its moniker. In 2008, the band originally attempted to obtain federal trademark registration its name. However, the USPTO examining attorney, who claimed that the trademark consisted of “immoral, deceptive, or scandalous matter”, refused the group’s application. LMFAO has since filed four applications attempting to trademark their name. This time, they have taken note that they are more likely to be successful in registering their mark if it does not contain an alleged curse word. The applications reveal that the term LFMAO stands for “laughing my freaking ass off” rather than the other “F word” that would lead to the denial of their applications.
The prosecution history of the trademarks DYKES ON BIKES and LMFAO leads to important questions regarding government regulation. If an examining attorney refuses a mark based on it being immoral or scandalous, he/she must provide support of that refusal through evidence that a substantial portion of the general public would consider the mark to be scandalous in the context of contemporary attitudes and the relevant marketplace. Still the question remains, whether the USPTO should be defining the general public’s moral compass? This question is important when one considers that other portions of intellectual property are not subject to the same amount of policing. For instance, LMFAO could file a patent for certain items, such as sex toys, that the general public may consider equally as scandalous. In a society filled with people of different religions, political affiliations, and beliefs, it is difficult to form a correct answer. What may be immoral to some can be perfectly normal and acceptable to others.
United States trademark law recognizes a “spectrum of distinctiveness,” a sliding scale of protectability, where the more distinct and unique the term, the easier it is for the owner to claim and be granted exclusive trademark rights for that term. Trademarks fall somewhere on this scale of distinctiveness, ranging from “coined”, which is the strongest, to “generic”, which is worthless:
COINED – Very Strong/Valuable (invented/made up words such as STARBUCKS and KODAK)
ARBITRARY – Strong/Valuable (words/images without connection to THE goods or services, such as APPLE and BLACKBERRY)
SUGGESTIVE – Good Value (words/images that allude to the goods or services but do not describe them such as GREYHOUND and PUP-PERONI, my personal favorite!)
DESCRIPTIVE – Weak/Low Value (words/images that refer to the character or quality of the goods or services, or an ingredient or aspect of them, such as JUICY STEAK)
GENERIC – Worthless (words/images that are names of the goods or services in any language)
The mark you choose should be strong, not just for registration purposes, but for the purposes of value and enforcement. Even a registered mark, if descriptive, may not be sufficient to prevent others from using the mark in association with those services because it will be difficult to enforce “fair use” of the mark for other purposes. Initially, you may be tempted to use a descriptive mark. However, keep in mind that the most valuable marks in the world reside on the upper end of the scale (i.e., “coined” and “arbitrary”). Coined and arbitrary marks are generally the easiest to register because there is no connection between the mark and the goods or services (as is the case with descriptive and generic marks), but they may present a marketing challenge when trying to educate the public about your company, goods or services.
Companies may choose a descriptive trademark even though it is a weak mark because there are marketing benefits to using a mark that describes the product. The USPTO generally hesitates to allow registration of a descriptive trademark because it describes all other competing products too. While descriptive trademarks have an initial marketing ease, there are many disadvantages to using them. These include increased costs of trying to register descriptive trademarks, which are routinely rejected by trademark offices worldwide. In the event that the owner of a descriptive trademark is not able to develop secondary meaning in the trademark (consider the now-registered mark HONEY BAKED HAM COMPANY), the mark is not protectable and consequently the owner will not be able to prevent others, even competitors, from using the same or similar terms.
Suggestive trademarks often strike the perfect balance, protectable as trademarks while still suggesting characteristics of the company, goods or services.
When creating your trademark, it is important to avoid marks which are the full name or a surname of an individual living or who has died in the last 30 years. In certain circumstances, it is possible to obtain registration of a surname as a trademark, particularly with permission of the individual (Taylor Swift owns the mark TAYLOR SWIFT). If you file to register a mark which appears to be someone’s name, you may be required to swear under oath that no such person exists, that the person is long dead, or to supply a written permission from the person named.
Avoid names that include a geographic area. Besides being easy to forget, and difficult to protect under trademark law, a geographical name may no longer fit if your business expands its sales or service area. Especially if you plan to sell products on the Internet, you should think twice about giving your business a geographic identifier.
Also, don’t limit expanded product lines, and don’t choose a name that might not be representative of future products or services. Also, consider choosing a mark which lends itself to becoming a “family” of marks. For example, MCDONALD’S, MCMUFFIN, MCRIB, etc.
Believe it or not, the USPTO has been granted the subjective task of deciding what is scandalous or disparaging material. Obsenities and racial or ethnic epithets are often rejected by the USPTO, and, due to it’s subjective nature, many marks actually get registered which are arguably scandalous or disparaging.
Avoid insignia of a government agency, or of certain organizations protected by law, such as the insignia or name of the FBI, Olympics, etc.
“Clever” Misspellings of Otherwise Unusable Marks.
I have a lot of clients ask if they can use fun spellings and iterations of marks that would otherwise not be available. Please keep in mind that this does not avoid the original problem with the mark. You probably could not get a registration for “DISNEE”, as it is too close to the famous mark DISNEY. Also, descriptive mark like “speedy” for a fast car is not registrable if you write it “spee-dee”. Similarly, if “Tomato” is generic for tomato, then so is “Toomatoe”.
Conduct a Search
After you’ve chosen one or more marks that seem possible, and before settling on a trademark and commencing any marketing efforts or spending any marketing dollars, make sure you do a cursory trademark search, by seaching Google and the USPTO website. You may also want to search WHOIS, for purposes of domain name availability. Because so many domain names are now unavailable (at least for a reasonable cost), then you may want to check what is available before settling on a trademark.
Keep in mind that searching on your own has its inherent limitations, and it’s wise, should the cursory search be “clear,” to utilize a third party search firm to search for marks that could be listed in business databases and used at common law. Such a comprehensive search will also check state databases for use of the mark as corporations or LLCs, for example.
My last post discussed how to avoid infringing the the IP rights of others. My fourth and final post on this topic will discuss how to avoid exposing YOUR intellectual property rights to infringement BY others! While you want to make every effort to avoid infringing the intellectual property rights of others, you must be just as eager to protect your own intellectual property rights in cyberspace. Here are just a few points to consider.
Proper Use of Your Trademarks
Regarding trademarks, consider registering trademarks, including your domain name. Further, use trademark notices appropriately and consistently throughout your website. Check to see if any of your company’s trademarks are being used as domain names, and consider obtaining ownership of domain names that infringe your trademarks. Obtain “legal title” to the domain name; avoid allowing legal title to be held by the website developer, the Internet service provider, or an employee.
Proper Use of Copyrights
Although creative content on a website is protected automatically by copyright, you should use copyright notices appropriately and consistently to reserve your rights and put others of notice. Further, obtaining federal copyright registration allows you to sue in U.S. federal court for infringement of your copyright. Under certain circumstances, websites that intentionally copy the so-called “look and feel” of another site may be subject to claims of copyright infringement in the U.S. One way to demonstrate copying is to show that the source code is identical. It is suggested that web designers give their graphics unique names so that if a particular graphic appears on another site with that same unique name, it may be cited as further evidence of direct copying. As between the site owner and the web designer, again, the issues related to which party is going to be the copyright owner of the elements of the site must be addressed in the contract between these parties, and the agreement should indemnify you or your client should any suit arise with respect to copying the “look and feel” of a website.
Furthermore, attempt to be proactive in prohibiting copyright infringement of your website and the elements of your website. For example, consider mechanisms to prevent “cutting and pasting” of information, text, and pictures from your website as a deterrence to copying, or at least explicitly state the prohibition of copying. Consider using technology to track third party use of your content, and take steps to ensure that your website fully complies with and takes advantage of the Digital Millennium Copyright Act.
Although an actual “patent” is unlikely to appear on your website, or even be accessible to third parties via your website, you should consider whether patent protection could be available for the technology or business models incorporated on your website. You should determine whether the ideas underlying the business model used for your website and e-commerce business are adequately protected under patent law. Further, keep in mind the novelty requirements, and in the U.S. there is a statutory one-year bar (35 U.S.C. §102), which allows you a one-year grace period after publishing information about your invention, using the invention publicly, or offering it for sale. In other words, you must file a patent application by the one year anniversary of the first publication, use or sale of your invention to obtain a patent; otherwise, you are statutorily barred. Outside the U.S., most countries require absolute novelty at the time of patent application filing, and, in many countries, business methods are not patentable subject matter.
Informing Users of Your Intellectual Property Rights
The issues mentioned above are just a few of the many issues you must consider when implementing a website, whether it be for e-commerce, or solely for entertainment or informational purposes. Although risks cannot be eliminated in their entirety, a thorough periodic website audit will certainly reduce the inherent risks associated with owning and maintaining a website. The nature of the Internet and the laws pertaining to intellectual property are enormously complex, and it is vital to follow the dynamic legal landscape associated with the Internet and intellectual property. As such, a thorough website audit prior to the launch of a website, and annually thereafter, will address many more concerns than outlined above to avoid the risk of litigation, identify potential infringers, remind well-meaning supporters of the valuable proprietary nature of your intellectual property rights, allow you to take advantage of any new laws and regulations, and, at the very least, give you the peace of mind to proceed with your Internet business.