Trademarks for Startups Knock Out Infringement Mikaela Keegan

Trademarks for Startups: Knock Out Infringement Mikaela Keegan & Lauren Roberts

What is a Trademark? ● A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. ○ Note: There is a technical distinction between a “trademark ” and a “service mark”, although both are registered with the U. S. Patent and Trademark Office (USPTO) in the same manner. ● A trademark is not a trade name! ○ A trade name is simply the name under which a company does business. ▪ Example: The shoe brand Adidas. Trade name = “Adidas AG”. Trademark = “adidas” ● The trademark protects the brand name & is associated with the trade name. ● Why is this important?

What Can Be Registered As a Trademark? DISNEY ▶ Word mark ▶ ▶ (e. g. name of the company) Design mark ▶ A symbol that represents the company and/or its goods or services (e. g. , the Apple apple) HULU SONY CNN

The Reality of Trademark Law Where do trademark rights come from? ▶ ▶ Actual Use in Interstate Commerce (provides enforceable rights) Federal Registration of the Mark (provides national recognition of ownership) NOTE: The “®” means that a mark has been registered with the governing body of the country, while the “™” means that the mark has not been registered but is in use by the company. Benefits of Federally Registering A Mark (through the USPTO) ▶ ▶ Exclusive Use Public Notice Legal Presumption of Ownership (within the US) Government Protection

Think you have something worth registering? ▶ Next Steps: ▶ ▶ ▶ Selecting a Mark Performing a “Knockout” Search ▶ USPTO TESS search & Google search Deciding the proper basis for registration ▶ 1(a) versus 1(b) Completing an application and submitting to the USPTO for review Responding to Office Actions & any public opposition Patrolling and protecting your registered mark

Step 1: Selecting A Strong Mark Note: A requirement for registration is distinctiveness of the mark! ▶ ▶ The more distinctive or unique a mark is, the more likely your application will be approved. Trademark Distinctiveness Spectrum ▶ ▶ ▶ Fanciful - something that is a made up word or had no previous meaning before the trademark was created; prima facie registrable. Arbitrary - normal word in the English language used in a meaningless way. The product is not connected to the mark itself. Suggestive - mark indicates the nature, quality or characteristic of the product or service in relation to which it is used, but does not describe the product. Descriptive - a term with a dictionary definition which actually describes that product/service. Generic - uses common, everyday names for goods & services; never registrable or enforceable against 3 rd parties.

Distinctiveness Spectrum

Step 2: Performing a “Knock-Out” Search Primary Purpose : ▶ To check for confusingly similar marks that are already either used in commerce, applied for, or registered ▶ Note: the existence of a mark that is confusingly similar to yours and used with related goods and/or services may bar registration of your mark either through the examiner finding that the marks are too similar or through public opposition by the owners of those marks

A Word on Infringement One purpose of performing a knockout search is to avoid a future claim of trademark infringement of another person/entity’s mark. What is Infringement? ▶ “Unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services. ” Recent Trademark Infringement Suit: Nirvana v. Marc Jacobs

How do examiners decide whether marks are “confusingly similar”? The “Du. Pont” Factors: 1. the similarity of the marks in appearance, sound, connotation, and commercial impression; 2. the similarity of the nature of the goods (relatedness); 3. the similarity of the trade channels; 4. the conditions in which the products are purchased; 5. the fame of the prior mark; 6. the nature of similar marks on similar goods; 7. the presence of actual confusion; 8. the length of time without actual confusion; 9. variety of goods on which a mark is used; 10. the market interface between the marks being disputed; 11. the extent to which a trademark holder has the right to exclude others from using the mark; 12. the extent of potential confusion; and 13. any other relevant facts

Continuing Our Search: USPTO (TESS Search) & Google Search Step 1: Complete an official search on TESS (trademark electronic search system) search on the USPTO website ▶ To make your search more meaningful, it is important to have clearly in mind (a) the mark you want to register; and (b) the goods and/or services in connection with which you wish to register the mark ▶ To find different goods and/or services classes, go to the Trademark ID Manual - ID Master List (note: you can pick more than one class) Step 2 : Search for your mark & variations of your mark to on basic search engines to see if you can find the same or similar marks. ▶ Note: just because there is a company with a website containing your mark does not mean the company has applied for or registered a trademark; however, they will have common-law rights in the mark

Step 3: Deciding the Proper Basis for Filing an Application Two Bases to Choose From: 1(a) - current use of the mark in commerce ▶ ▶ Sales are being made / services are being provided on your website or in person, there are purchases being made from across state lines, etc. Requirement: the applicant must provide a specimen which illustrates the mark’s use in commerce ▶ Examples: ▶ For goods: labels & tags or screenshot of “buy now” feature on a website in relation to the goods and services description on the application ▶ For services: brochures & advertisements, yellow page listings

Step 3: Deciding the Proper Basis for Filing an Application (continued) 1(b) - a bona fide intent to use the mark in commerce in the future ▶ Use this basis when your mark has not yet been used in commerce but you anticipate that it will be in the near future ▶ After filing a 1(b) application, once a Notice of Allowance is issued, you have 6 months to add a specimen to your application providing evidence of its use in commerce ▶ You can also submit a request for a six-month extension to file that specimen if the mark is not being used in commerce at that time ($125/class of goods or services per extension)

An Example: Zen. Eats ▶ Step 1 : Selecting our mark → Zen. Eats ▶ Our Idea: An ATM for frozen desserts (like the Sprinkles cupcake ATM) ▶ Step 2 : Go to USPTO’s ID Manual, which is a database that includes all goods and services classes and approved descriptions of those goods and services ▶ Goal: search for and select a goods and / or services class that fits our mark

Searching for Confusingly Similar Marks Option 1: Basic Word Search Option 2: Structured Search

TESS Results for “Zen. Eats” Searches (structured) Results (zen)[ALL] & (food)[GS] Froo-Zen - Class 030: breakfast burritos (zen)[ALL] & (frozen)[GS] Fru(? )zen Ice - Class 043: frozen yogurt shop services in the nature of a restaurant Yo. Yo: Zen Frozen Yogurt - Class 030: frozen yogurt - Class 043: restaurant services, namely frozen yogurt shops (zen)[ALL] & (dessert)[GS] Fro-zen - Class 030: coconut-based fruit ice

Web Results for “Zen. Eats” Results: ▶ ▶ ▶ Zen Eating - a device to help people stop overeating ▶ https: //zeneating. com/ Frozen Eats - local frozen food distributor location in Barrhaven (Ontario, Canada) Zen’Eat - restaurant in France

Analysis Based on Searches Analysis (assessing likelihood of confusion): ▶ ▶ ▶ ▶ Froo-zen - same class, but selling breakfast burritos; dissimilar in sound Fru(? )zen Ice - different class; different in sight and sound Yo. Yo: Zen Frozen Yogurt - different in appearance and sound Fro-zen - different in appearance but same class Zen Eating - different trade channels but close in sight and sound Frozen Eats - similar in sight and sound but used outside of the U. S. Zen’Eat - different trade channels and goods/services; used outside of the U. S.

Application Process: Cost ▶ Filing fee is based on three factors: ▶ (1) number of marks ▶ ▶ Only one mark may be filed per application E. g. if you have a word mark “Zen. Eats” & then a logo (like this one), you would need 2 separate applications ▶ (2) number of classes ▶ (3) application filing option selected ▶ ▶ You must pay for each class of goods and/or services in the application 3 options: ▶ TEAS Plus = $225 [file online and use pre-approved description ] ▶ TEAS Reduced FEE (RF) = $275 [file online and use custom description ] ▶ TEAS Regular = $400 [file by mail ] ZE

Application Process: Timing (1(a) Mark) File Application Online & Pay Fees 1 to 3 months after filing → an examining attorney will review your application Office Action Notice of Publication 6 months to respond, then Notice of Publication If no opposition, registers as 1(a) mark 30 days of publication If opposition, must respond & go through other procedures

Application Process: Timing (1(b) Mark) File Application Online & Pay Fees 1 -3 months after filing → an examining attorney will review your application Once Notice of Allowance is issued, you have 6 months to show use in commerce via submission of a specimen (note: 3 years maximum to submit with extensions) Office Action 6 months to respond, then 30 If specimen is days of publication if accepted, approved trademark is If no opposition, Notice registered Notice of of Allowance is issued 30 days of publication Publication If opposition, must respond & go through other procedures

Successful Registration & Enforcing Your Mark Once your mark is registered: ● You are solely responsible for enforcement of the mark. You should look through the USPTO database regularly to police your mark. ● Costs of keeping up a trademark registration: ○ Between years 5 & 6 after registration - owner must file a “Section 8” declaration to confirm whether the mark is used in commerce and associated with the goods and services class for which it is registered. (fee = $125 per class of goods or services) ○ Between years 9 & 10 after registration - owner must file a “combined filing” declaring the use or the non-use of the mark (“Section 8”) as well as an application for renewal (“Section 9”) ■ Fee = Combined renewal is $425 per class of goods or services in initial registration. ○ Combined application for renewal must be filed every ten years after the date of registration.

Questions? To learn more about the BU Startup Law Clinic and apply for our services visit: https: //sites. bu. edu/startuplaw/