Last month I mentioned a trademark bullying webinar available through Minnesota Continuing Legal Education (MinnCLE), here. Tuition was $95 for 75 minutes of action-packed discussion on this very hot topic, so, a real bargain.

Now, MinnCLE is graciously making it available for viewing free, here, so enjoy. (No CLE credit).

By way of preview, yours truly set up the topic and then moderated an engaging discussion with four interesting and insight-filled speakers:

  • Mike Masnick of Techdirt fame provided a brief 10-minute video making the case for why trademark bullying is a problem and he notes some of the worst offenders (including Monster Cable), and then provided other live commentary on the topic.
  • Jack Clifford, a thirty-year veteran of Merchant -Gould identified Kellogg’s as an owner deserving the “trademark bully” title. Jack noted Leo Stoller as a “trademark bully” of sorts that the Trademark Trial and Appeal Board (TTAB) sanctioned, but he generally thinks the TTAB is a “playground without a proctor,” leading to abuses by trademark owners in that forum — since no fees or other monetary sanction is possible at the TTAB.
  • Jackie Leimer, currently of Chicago-Kent College of Law, provided a wealth of insight and perspective as former President of the International Trademark Association, former Chief Trademark Counsel of Kraft, former Partner of Kirkland & Ellis, and former trademark counsel of Quaker Oats.
  • Last, but certainly not least, my trial partner Craig Krummen, of Winthrop & Weinstine, did a very fine job identifying and analyzing the various legal tools available to those who feel victim to the acts of trademark bullies. Good stuff.

I hope you enjoy the webinar and fine it useful. Please share any thoughts you have about it here.

"Just because you can," is rarely a good reason to support a decision that really matters. This principle is no less true in the trademark world than it is elsewhere.

So, relying on your own navigation of the U.S. Patent and Trademark Office’s (USPTO) online search database without also seeking a trademark attorney’s competent analysis of the search results, can be a dangerous plan, even though you can go it alone. Likewise, just because you can file a trademark application yourself doesn’t make it a smart business decision to avoid engaging a professional with day-to-day working knowledge of all the USPTO nuances and pitfalls.

There are, however, limits on what outside trademark attorneys should do for their trademark owner clients. For example, another decision in the trademark world that really matters, but doesn’t get enough attention, is who should sign verified statements filed with the U.S. Patent and Trademark Office (USPTO). The Trademark Rules liberally permit certain attorneys, among more obviously appropriate persons, to sign such statements on behalf of the trademark owner:

(i) A person with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership);

(ii) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or

(iii) An attorney as defined in Section 11.1 of this chapter who has an actual written or verbal power of attorney or an implied power of attorney from the owner.

But, again, just because a trademark attorney can sign verified statements with the USPTO on behalf of the trademark owner doesn’t make it a good idea. In fact, it should be a last resort for a trademark owner to have its outside trademark counsel sign verified statements with the USPTO.

As a result, I continue to be amazed how many outside trademark counsel continue to make it a regular practice of signing verified statements on behalf of their trademark owner clients. While I fully recognize it may provide a convenience to have outside trademark counsel sign such statements, and there may well be times when the urgency of a looming deadline requires it, the frequency of validity and fraud challenges in trademark oppositions, cancellations, and district court litigation, should be enough to encourage trademark owners to first consider these risks:

  • The person signing the verified statements becomes a potential fact witness;
  • If outside trademark counsel becomes a witness, he/she may be disqualified and precluded from representing the trademark owner in a dispute involving the filing;
  • Concerning the factual accuracy of the statements made to the USPTO, outside trademark counsel will rarely have firsthand knowledge and never be closest to the true facts;
  • Trademark owners are unlikely to successfully defend any false statements made by their trademark counsel that are based on legal misunderstanding (i.e., "bona fide intent to use," "use in commerce," "interstate commerce," "substantially exclusive" use, and misuse of the federal registration symbol); and
  • The TTAB appears inclined to adopt "reckless disregard" as sufficient culpability to justify an inference of intent to deceive the USPTO in trademark fraud challenges.

So, can you think of and share any additional reasons not to have outside trademark counsel signing verified statements with the USPTO? Where do you stand on the issue with in-house trademark counsel? How about in-house corporate counsel who lacks trademark expertise?

And, what about the reasons in favor of outside trademark counsel signing such documents, are there any beyond convenience and deadline urgency? Finally, do you agree that outside trademark counsel should be the one designated to sign verified statements only as a last resort?

 —Alan Bergstrom, Beyond Philosophy

  

IHOP (International House of Pancakes) recently filed a lawsuit to prevent another group, International House of Prayer, from using its trademarked acronym. According to the trademark infringement filing, IHOP has repeatedly asked the religious group to drop the use of the acronym IHOP, which is a registered trademark for its franchised chain of restaurants and has been in use since 1973. The International House of Prayer has been using the name and acronym for about 10 years. IHOP claims the prayer group’s use of the initials creates confusion for the public, as well as intentionally creating a name and acronym which it knew was famous and well-recognized in order to benefit from its broad awareness and notoriety. The last straw prompting the lawsuit seems to be the prayer group’s recent offering of food at some of its locations.

I don’t know about you, but it seems to me (and I’m not an attorney, just a branding guy) that there are several issues at play here. First, one could argue that the two organizations are in very different sectors and that the public shouldn’t be confused between the two (even though the prayer group now serves its members/guests something to eat while they come to pray). Consider this scenario. Imagine the possible confusion that could ensue if IHOP (prayer group) were to be caught up in some type of “scandal”, such as tax fraud, or discrimination. In our world of media sound bites, someone scanning headlines that read “IHOP charged with tax fraud”, or “IHOP faces discrimination lawsuit”. Many could easily think the IHOP (pancakes) was the brand under investigation and affect patronage.

One may feel that this is the case of big corporate America picking on the innocence of a small non-profit religious group, but, if the law is interpreted to apply to some groups and not others, then Pandora’s Box is opened. One must wonder why the prayer group didn’t choose another equally meaningful name, like Global Place of Prayer (GPOP), or Best Place to Pray (BPTP), or even International Place of Prayer (IPOP)…probably because none of the other possibilities had the existing brand name recognition that IHOP had. To me, that’s trademark infringement, pure and simple. It seems to me that when someone intentionally seeks to benefit from the goodwill and investments made to create market familiarity and brand awareness (brand equity) by creating a similar brand name, the line has been crossed.

Second, I believe the reason we have trademark laws is to protect the investment and reputation that years of hard work and management have been spent to build up the value of a brand name (so that someone else can’t just come along and use it to their benefit without the investment and recognition that the originator put into it). As brand managers and brand owners, we know the cost (both in sweat equity, as well as financial equity) required to build strong brands. It doesn’t seem fair for someone else to “steal” or “borrow” that brand value without permission or purchase (licensing arrangements exist for that reason).

I wonder if IBM would have done the same if the prayer group had named itself International Bible Mission and used the associated acronym…

What do you think? Does IHOP (pancakes) have a case? Who should prevail?

Aaron Keller was busy yesterday making weighty predictions about the basis for our next economy: The Designed Economy.

As I prepare to provide attendees at the Midwest IP Institute tomorrow with a trademark fraud update — today, I thought I’d provide a preview — and even go out on a small limb — making a couple of predictions of my own, relating to the far more scintillating topic of trademark fraud before the United States Patent and Trademark Office (USPTO).

As you may recall last year, I wrote about the Court of Appeals for the Federal Circuit’s (CAFC) groundbreaking decision In re Bose, here, here, here, and here, in which the CAFC rejected the Trademark Trial and Appeal Board’s (TTAB) less stringent "knew or should have known" negligence standard of fraud, instead coming down in favor of a much more stringent — and difficult to prove standard — subjective intent to deceive the USPTO.

Over the last year, much attention has been given to the fact that the CAFC left open and chose not to decide, in In re Bose, the question of whether a "reckless disregard for the truth" may suffice in proving the necessary subjective intent to deceive. Many argue that "reckless disregard" should suffice in proving fraud for the sake of the integrity of the U.S. trademark system, to ensure that trademark owners and their counsel are kept honest and/or don’t become lazy or complacent about the solemnity of the oath in their trademark filings.

Reading the tea leaves, I’m predicting that the TTAB will not wait for the CAFC to decide the issue and the TTAB will rule that "reckless disregard" constitutes a sufficient level of culpability to infer a specific intent to deceive. If so, what does that mean? What kind of trademark conduct might satisfy a "reckless disregard" standard?

Continue Reading Trademark Fraud = Reckless Disregard For The Truth?

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Last September, in my blog post entitled "What Does Trademarked Mean to You?," I wrote:

More than a few trademark types cringe when their clients or others say things like "let’s trademark it," "they didn’t trademark their logo," or "we don’t want to trademark this name," and, when they ask questions like "is it trademarked?" or "is that trademarked software?" or "did we ever trademark our logo?" or "should we be trademarking this packaging?"

Indeed, some have written: “’Trademark’ is not a verb. There is no such thing as ‘trademarking’ a word or phrase." Similar views are expressed here, here, and here.

Well, a couple more of the cringers have raised their hands.

Our good friend John Welch over at the TTABlog reported yesterday that he doesn’t like "seeing the word ‘trademark’ used as a verb," and he republished a recent article by Daniel Kegan entitled "The grammar of intellectual property: Copyright is a noun, trademark is an adjective," originally published by the Illinois State Bar Association, linked here. In his article, Mr. Kegan similarly writes: "Trademark is an adjective, not a verb."

Actually, according to the English dictionary, "trademark" is both a noun (you know, a person, place or thing?) and a verb (an action):

trade·mark

–noun

1.

any name, symbol, figure, letter, word, or mark adopted and used by a manufacturer or merchant in order to designate his or her goods and to distinguish them from those manufactured or sold by others. A trademark is a proprietary term that is usually registered with the Patent and Trademark Office to assure its exclusive use by its owner.
2.

a distinctive mark or feature particularly characteristic of or identified with a person or thing.
–verb (used with object)

3.

to stamp or otherwise place a trademark designation upon.
4.

to register the trademark of.

Indeed, even this quote from Mr. Kegan’s article confirms the proper use of "trademark" as a noun: "A trademark is obtained by use." This is a correct statement of fact and law, but the word "trademark" is clearly the object — the thing — of this sentence, i.e., the noun. Furthermore, with respect to the proper use of "trademark" as a verb, as I have previously written:

[T]he words "trademark," "trademarked," and "trademarking," are recognized words with established verb meanings that have formed part of the English language: "(1) To label (a product) with proprietary identification; and (2) to register (something) as a trademark." Moreover, the word "trademarked" has an established adjective meaning too: "labeled with proprietary (and legally registered) identification guaranteeing exclusive use; ‘trademarked goods’".

From my perspective, there is no need for cringing or even correction, just further inquiry into how the words "trademark," "trademarked," and "trademarking" are being used.

Given the various definitions for these words, the speaker might mean labeling a product or advertising material, utilizing or marking such materials with the appropriate trademark notice or symbol, registering a trademark or service mark, or perhaps, all of the above. Since the described actions (labeling and registering) are quite distinct, it becomes important to seek clarity on the speaker’s intended meaning.

So, again, really, what’s the big deal?

No need to cringe, in my humble opinion, this is just another example of where the use of a word in the English language begs for some follow-up questions by the listener to clarify the speaker’s intended meaning. Seems to me this potential for confusion is an opportunity for us trademark types to engage the speaker by asking some questions and then offering to explain and enlighten.

Where do you camp on this issue? Are you a cringer when it comes to IP grammar?

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Seth Godin has an amazing knack for creating and spreading ideas that matter, mostly really good ones, by the way. I always look forward to his daily riffs and I have been known to spread some of his important ideas too when they overlap with things I happen to care a lot about.

When it comes to Mr. Godin’s trademark advice, however, I’m not feeling it, sorry (that wasn’t an apology either). Some of it is, well, lacking an indispensable quality. Even when it is accompanied by this witty disclaimer: "I’m not a lawyer. I don’t even play one on TV. If you rely on my legal advice, you’re getting exactly what you paid for."

The problem is, sometimes you end up getting much less than you anticipated and actually end up much worse off, when you follow down even a "free" path based on misunderstandings and misconceptions, at least as they relate to one’s legal rights.

I’ll never forget one evening watching Geraldo Live during the O.J. trial, more than fifteen years ago, as a young trademark lawyer. There was quite a stir about some trademark applications Mr. Simpson had filed for O.J. Simpson, Juice, and O.J., around the time of O.J. Simpson being charged with the murder of Nicole Simpson. I recall one of Simpson’s defense lawyers, the brilliant constitutional lawyer Alan Dershowitz, rebuffing criticism about the trademark filings, unwittingly contending that Simpson never intended to use or benefit from those applications, he simply filed them to make sure no one else could. My jaw dropped when I heard this, because it provided a legal basis to immediately invalidate each one of the applications. In addition, had anyone followed this defensive "legal advice," their trademark filings would have been wasted money and considered invalid and void ab initio, since U.S. trademark law requires that an applicant must have a bona fide intention to use the mark on each and every good and service listed in the application.

Back to Godin on Trademark*, and even more recently, a couple of months ago Seth Godin wrote about how to protect your ideas in the digital age:

One way is to misuse trademark law. With the help of search engines, greedy lawyers who charge by the letter are busy sending claim letters to anyone who even comes close to using a word or phrase they believe their client ‘owns’. News flash: trademark law is designed to make it clear who makes a good or a service. It’s a mark we put on something we create to indicate the source of the thing, not the inventor of a word or even a symbol.

While there are certainly some greedy trademark lawyers in the world, and some that overreach on behalf of their client brand owners, even honorable and ethical trademark attorneys worth their hourly rate know that federal protection against dilution for truly famous marks was added to U.S. trademark law about fifteen years ago. At least for marks satisfying the difficult fame standard, these kinds of trademarks come darn close to owning the brand name in gross, that is, in connection with any goods or services.

For the garden variety and non-famous trademark, the scope of rights is defined by whether or not there is a Likelihood of Confusion.

With respect to what trademark law was designed for, and while I don’t consider this to be a news flash any longer, well prior to dilution protection being added, U.S. trademark law was amended to make clear that much more than confusion as to source is covered. All the way back in 1962 the Lanham Trademark Act was amended by striking language requiring confusion, mistake or deception of "purchasers as to the source of origin of such goods and services." Moreover, a much broader scope of confusion protection was codified in 1989 in Lanham Act Section 43(a), which protects against trademark likelihood of confusion not only as to source, but as to affiliation, connection, sponsorship, association, and/or approval. This additional scope of trademark protection makes perfect sense given the current commercial realities of trademark licensing, franchises, co-branding, affiliate marketing, and OEM relationships.

I’m not saying Seth Godin’s opinions about trademarks are Out of Bounds, I’m simply saying some of them are out of date.

With a little luck, and assuming I can get in enough time in front of my Stuart Smalley mirror between now and next week, I’ll explore another misconception or misgiving it appears Mr. Godin has about the registration of trademarks:

Some lawyers will get all excited and encourage (demand!) that you register your trademark. This involves paying a bunch of money, filing a bunch of forms and earning an ® after your name instead of the ™. While the ® does give you some benefits by the time you get to court, it doesn’t actually increase the value of your trademark. And you can wait. So, when you come up with a great name, just ™ it.

So, stay tuned.

What do you think, is Overstock.com selling bling with the Fordless blue oval logo?

Enamel Turquoise with Blue Ovals Bangle Bracelet

As you may recall from my post back in September, Ford Motor Company is attempting to register the below shown non-verbal logo as a trademark for a variety of goods in Int’l Class 12:

Mark Image

And, as you may recall from Dan’s I See Blue Ovals post back in August, there are far more than a handful of blue oval logos out there besides this one:

 

The pending Fordless blue oval intent-to-use trademark application recently was examined by the U.S. Patent and Trademark Office (PTO), and on October 23, 2009, the PTO found no substantive bases for refusal, but instead it issued an initial refusal noting only a couple of purely procedural or technical deficiencies, concerning the wording in the lengthy description of goods and the need for Ford to submit a claim of ownership to some related registrations (here, here, and here).

Continue Reading More On The Fordless Blue Oval

Trademark types: As promised, here are some of my more detailed thoughts and perspectives (at least for the time being) on the most significant trademark case of the year: In re Bose.

Thanks to Thomson Reuters for asking me to share them with their readers. I look forward to some great dialogue on the likely implications resulting from this long-anticipated trademark fraud decision.

Marketing types: An adversary’s ability to cancel your company’s trademark registration for fraud just got much more difficult with this important Bose decision. Basically, fraud means fraud again.

Instead of your adversary only needing to prove that you should have known that a material statement made to the Trademark Office actually was false at the time you made it (as was the law applied by the U.S. Trademark Office for the last six years), now, simple negligence is no longer enough to establish trademark fraud, instead, an actual intent-to-deceive the Trademark Office must be proven.

Having said that, despite this revived more difficult-to-prove fraud standard, it is as important as ever to treat the statements or representations you make to the Trademark Office as seriously as ever, and with the utmost solemnity, making sure you truly understand what you are signing so you can actually affirm the truth of those statements and representations.

It probably goes without saying that the apparent simplicity of the electronic trademark forms can be quite deceiving. So, there are no stupid questions when it comes to your understanding before signing electronic form documents that are submitted to the Trademark Office.

UPDATE: ExecSense Webinar on the Bose Decision, now available for purchase. Just so you know, all royalties due to me are being donated to The Ronald McDonald House Charity.