How Does a Trademark Achieve a Level of Fame?

The relative fame of a Trademark is an important factor when claims of dilution are raised by a Trademark owner against a 3rd party to determine whether or not actual dilution of the registered mark took place.  One type of claim for dilution, namely dilution by blurring, occurs when a 3rd party begins using a mark, slogan or log that closely resembles another party’s registered Trademark, in order to benefit from the good reputation or popularity of the registered “famous” mark through an implied association.

In this example, the owner of the alleged famous Trademark would assert claim of dilution against the 3rd party in order to not only prevent confusion amongst consumers as to the origin of the marks, but to eliminate any misconception that one mark is associated, affiliated and/or approved by the famous mark.  The senior user of the mark is seeking to prevent a newcomer from riding on the coattails of their hard work, success and goodwill in creating and using their mark.

When determining if dilution by blurring has occurred, a Court will look at whether or not the prior mark is famous and distinctive, either inherently or through acquired distinctiveness. If the mark is determined to be famous, the court will look at a number of factors to determine if dilution by blurring has occurred. These factors include:

  • The degree of similarity between the mark or trade name and the famous mark.
  • (ii) The degree of inherent or acquired distinctiveness of the famous mark.
  • (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
  • (iv) The degree of recognition of the famous mark.
  • (v) Whether the user of the mark or trade name intended to create an association with the famous mark.
  • (vi) Any actual association between the mark or trade name and the famous mark.

So what does it take for a Trademark to become famous?  First, the prior mark must have achieved fame before the 3rd began using their own mark, in addition the owner of the alleged famous mark bears the burden to prove that their mark is famous.  Second, the Court will look at a number of factors when determining whether or not a mark is famous including the duration, extent, and geographic reach of advertising and publicity of the mark; the amount volume and geographic extent of sales of goods or services offered under the mark; and the extent of actual recognition of the mark.

The burden is high for a mark to be considered famous; there is no exact path to follow that will guarantee fame.  Marks such as Coca-Cola, Kool-Aid, Kleenex and Sony are considered famous, however back in April 2016, the mark Lady Gaga was not found to reach the standard of a famous mark. In sum, a mark that is instantly recognizable, nationally known, a high number of sales and great deal of advertising are all likely requirements for fame to be achieved.

Avoiding Pitfalls of a Generic Trademark

One of the prerequisites to securing a Federal Trademark registration is through the use and creation of a distinctive mark.  There are five main categories of marks that exist which provide varying levels of distinctiveness: generic, descriptive, suggestive, arbitrary, and fanciful. While, suggestive, arbitrary and fanciful marks are considered distinctive by the Trademark Office, both, generic and descriptive marks fail to reach that threshold.

A fanciful mark is one that has no meaning outside of its use as a trademark, such as Exxon or Starbucks. An arbitrary mark is a word that is known but is in no way related to the goods or services being offered; a classic example is “Apple” for computers. A suggestive mark suggests a character or quality of the goods but requires at least some though or imagination to relate the term to the goods themselves. Some common examples of suggestive marks include Microsoft, Citibank and Greyhound. A mark that is merely descriptive of the goods and services offered in connection with the mark generally is not entitled to registration on the Principle Register.  However, a mark that may be classified as merely descriptive may be able to gain acquired distinctiveness through secondary meaning over the passage of time.  In most instances, acquired distinctiveness is usually shown through five or more years use and evidence that consumers have come to associate the mark with the goods and services offered.

Generic marks, however, have no such exception; the Lanham Act clearly states that generic marks are not eligible for registration.  Generic marks are those that are named after the goods or services being sold.  For example, if someone sought to register the mark “Apple” for the sale of apples, the Trademark Office would consider this to be generic.  Alternately, when the term, “Apple” is used in conjunction with computers, this use would be allowable as the mark does not relate to the goods being associated with the mark.  One of the main principles behind this rule is that the Trademark Office seeks to prevent the ownership of common terms, and rather allow these terms to be in the public domain for everyone to use.

In some instances, a mark may start out as distinctive, however over time the marks may become generic due to the public’s perception and use of the mark.  In these circumstances, the Lanham Act based on §14(3) calls for cancellation of the registration.  A few examples of marks that have become generic over time include “Escalator,” “Aspirin,” “Thermos,” “Trampoline,” and “Dry Ice.”  Each of these marks became victims of what has come to be known as “genericide.” The public adopted these marks as a name for the good itself, forfeiting the use of the terms as a brand.

Other marks have trended towards generic in nature, but have been able to escape cancellation; these marks include Google, Kleenex, Band-Aid, Crock-pot, Frisbee and Ping Pong. Although many people use these terms to describe the general good or service, the current generic terms still remain, namely internet search engine, facial tissue, adhesive bandage, slow-cooker, flying disc and table tennis. Owners of these marks have been able to maintain ownership through active enforcement of their rights against unauthorized users and through advertisement and labeling of their products to promote these marks as a brand rather than as a product.

The more popular a mark becomes, and the more the mark tends to dominate the field of its particular good or service, the harder it becomes for owners to avoid the cancellation due to the genericide of the mark.

How to Play Music/TV in Your Business without Infringing on a Copyright

The Federal Copyright Act grants copyright owners exclusive rights in their works. This includes the right to public performance. Public performance of a work does not only mean live performances, but includes playing music via CDs, playlists as well as over the radio and in addition to showing television to the public. Business owners, including food establishments, are subject to this rule, requiring the owner to pay a licensing fee in order to play music or TV for their customers.

Many business owners obtain a blanket license to play music in their establishments through performance rights organizations, or PROs. The three major PROs consist of ASCAP, BMI and SESAC. A blanket license will allow you to play any of the songs covered under the license the particular PRO grants to the business.  For example, this may require that a business owner will need to obtain multiple license through different PRO’s to cover a broader base of songs and music, if the business owner seeks to play music outside of the license of a single PRO.  That being said, one benefit of utilizing a PRO is the large library of music that a business owner may utilize to customize one or multiple playlists, or for broader protection if live music is part of their business. However, a blanket license is not inexpensive and there may be many songs that are unnecessarily included in the license that would never be played in the business establishment.

Alternatively, some business owners utilize services such as Mood Media (formerly Muzak). Services like Mood will create custom playlists for your business and the subscription service covers the licensing fees. Under this approach, business owners may find this to be a cost effective way to ensure they are not infringing on an artist’s copyright.  However, there are drawbacks under this licensing scenario, namely that license may not cover the right to live performances or TV broadcasting, in addition to being limited to a specific set list which may become repetitive over time.

There are some exceptions to the rule, where restaurant owners would not need a license to be allowed to play the radio or TV. First of all, the rules apply when the work is intended to be received by the general public, therefore radio or TV played only for employees may be entitled to license-free use in most cases. A restaurant may also be exempt if they do not charge to hear the music; live music, CDs and other methods of playing music do not fall under this exemption. The exemption also applies to restaurants who wish to play radio or TV for the public that are less than 3,750 square feet with no more than four TVs in the entire establishment, and to larger businesses as long as there are no more than four TVs, no more than one TV in any one room, no TV bigger than 55”, the audio is played through no more than six total speakers or four in any one room and as long as there is no cover charge. Non-food establishments meet a similar exemption, however, the square footage determination is more or less than 2,000 feet.

Playing music or showing TV in any business may be costly, however, attempting to get away without a license could end up costly exponentially more. If you want to increase your business through the appeal of music and television, it is worth it to make sure you are legally covered. A copyright attorney, PRO representative or licensing service are great resources to make sure you are not infringing on the copyrights of another and protect you from costly litigation and fines down the road.

®: What comes next? – Maintaining your Trademark

After what came sometimes be a years-long process, you’ve finally received your registration certificate. Congratulations! Now what do you do?

First of all, use that ®.  Once a trademark is registered, the owner will want to put the world on notice that their mark is in use and it is registered with the United States Patent and Trademark Office. This saves the owner the extra step of having to notify an infringing party that the mark is protected and that they do not have permission to use it. The ® put the public on notice as the USPTO will not enforce the rights associated with your mark against a potential infringer.  If an owner believes their mark is being used unlawfully, they should contact a Trademark Attorney to go over the best options to resolve the matter quickly and cost-effectively.

A Trademark registration has the potential to last indefinitely, as long as the required filings and fees are timely submitted and continued use is shown.

The first time a filing is required is between years five and six after the date of registration. This type of filing is called a declaration of use under Section 8 of the Trademark Act. A sample showing use of the mark is required with this filing, not unlike the specimen required during the six-month acceptance period prior to registration. At this time, an owner can also file a declaration of incontestability under section 15 of the Trademark Act, as long as they meet the minimum requirements. This status, if acknowledged by the Trademark Office, makes it harder for challengers to contest the validity of the mark later on, as it conveys a presumption that the mark is entitled to a presumption of validity.

The next required filings happen between years nine and ten. An owner is required to file another declaration of use, along with a specimen showing use, under section 8 of the trademark act. The owner is also required to file a renewal application under section 9 of the Trademark Act. The USPTO has made this type of filing easier by combining them into one easy form. Once this filing is complete, maintenance is only required every ten years.

If during either of these filing periods, years five to six or nine to ten, the Owner needs additional time, there is a six month grace period for each. However, like most grace periods or extensions with the USPTO, you will be required to pay for the extra time.  The easiest way to remember to keep up with these deadlines is to set reminders now unless you work with a Trademark Attorney who would docket and alert you of the upcoming renewal periods.

In summary, as long as you are using the mark in commerce and submitting the necessary renewal documents and fees, maintaining registration of a mark is a fairly straightforward process.

Artificial Intelligence & Copyright – Who is the author?

Several countries around that world have created artificial intelligence capable of creating works of art.  Whether the creation is a painting, music or a novel, the artificial intelligence (AI) is taught to analyze pre-existing works in the same genre of artistic expression in order to create an original work. So who owns the copyrights to these works?

As of now, the copyright act only extends to legal persons, that is, natural persons and corporate entities, and therefore, the AI cannot own the copyright. So the question becomes, did the AI create the art or did the person who created the AI in turn create the art?

This issue is similar to that in the “Monkey Selfie” case. While photographer David Slater was taking pictures of Celebes Crested Macaques, one of the monkeys grabbed a camera remote and took several “selfies.”  Intellectual Property Attorney’s should take note that this case was hotly debated as it raised the issue of whether or not a creator of a copyright could be non-human. Ultimately it was decided that non-humans could not obtain a copyright.

Unlike the monkeys, here the AI is created by humans. Someone had to write the code that instructs the AI on what to do and how to do it. Some say that the creators of the AI should own the copyrights to any works created by them. However, they might run into issues of control. In the Monkey Selfie case, it was decided that the photographer did not have enough control over the creation of the work. The Monkey took the camera remote, posed himself, and took his own pictures. Other than setting up cameras near the monkeys, the photographer did very little to facilitate the creation of the pictures.

Here, the issue arises when we create AI that can learn. It is at this point that the issue of control resurfaces because the human is no longer in control over every action and decision the AI makes. When the AI has the ability to think and act freely, it will become more difficult for the human creator to take credit for the AI’s work.

So what happens if no one can claim copyright protection in the AI created works?

Most likely the works would be considered fair use as they are in the public domain and anyone could use, replicate and sell the works without obtaining permission and without having to pay royalties. This not ideal for the AI creators and their companies since a great deal of time and money goes into creating AI.   However, if companies are unable profit off of art created by their robots, we may see limited continuation of this type of technology.

EU Hits Google with $2.7 Billion Antitrust Fine

On Tuesday June 27, 2017, Google was hit with a $2.7 Billion antitrust fine by European Union regulators. This is the largest fine issued by the EU for an antitrust case. After a seven-year investigation, Google was charged with favoring its own products on its Google shopping page and for disfavoring its competitors by pushing them farther down the search results.

“It denied other companies the chance to compete on the merits and to innovate.  And most importantly, it denied European consumers a genuine choice of services and the full benefits of innovation,” said European Competition Commissioner Margrethe Vestager.  Google has been given ninety days to correct is shopping services search results or receive additional fines.  There are currently two other charges being investigated.

For advertisers in the EU, this could result in the need to develop a new advertising strategy. Advertising on Google is competitive and participants put in a great deal of thought, time and money into building these strategies. Advertisers that currently have a system that is working for them may find it necessary to update or alter their strategy after Google implements the required changes with respect to its products and its rivals’. Google’s rivals, however, should see improvement in their advertising strategies once the mandatory alterations have been implemented.

It is likely that Google will appeal this decision. The current ruling could allow for private litigants to try to obtain damages through their national court. And in light of the two additional charges that are being looked into, Google is unlikely to accept the EU decision without a fight.

Currently, it is unclear what this will mean for those who utilize Google shopping in the US. There have been complaints about Google’s ranking methods from its US rivals in the past. This ruling could be seen as an opportunity for those rivals to make moves into Google’s backyard.

Google has dominated the search engine market for some time now and it is unlikely that this decision will cause consumers to start using another site anytime soon. However, this does not mean that users are willing to just accept search results that are now known to have been tampered with, especially when Google has a personal stake in the rankings.

In summary as stated by the EU regulators, “But Google’s strategy for its comparison shopping service wasn’t just about attracting customers. It wasn’t just about making its product better than its rivals. Google has abused its market dominance in its search engine by promoting its own shopping comparison site in its search results and demoting its competitors.”

#NoFilter: Supreme Court paves way for Offensive Trademarks

On June 19, 2017, the Supreme Court concluded that the disparagement clause of the Trademark Act violates the Free Speech Clause of the First Amendment.  The heart of the issue comes down to whether or not a restriction on disparaging marks is a violation of the First Amendment and frankly, the answer is yes. The Government offered explanation by way of public policy and interest. However, the Supreme Court remained firm in the idea that principal of freedom of speech means the freedom to express our ideas and opinions, even if they are negative.

In light of this ruling by the Court, applicant’s seeking Trademark registration for a particular offensive mark, no longer need to be weary of the USPTO rejecting their application for fears of violating the disparagement clause.  Additionally, a Trademark Attorney consulting with their client on selecting a particular mark for registration, need not be as restrictive in eliminating potential marks that would most likely have been rejected prior to this ruling.  The Supreme Court has firmly supported a trademark owner’s right to register a mark, no matter how offensive, as long as it meets the minimum requirements of filing under the Trademark Act.  In turn, a mark may no longer be rejected merely because it expresses a negative viewpoint.

For some, this case comes as a huge win in that the ruling eliminates a potentially large obstacle in the trademark registration process. Most notably, the Washington Redskins, may find themselves benefiting from this ruling immensely as they are currently appealing the cancellation of their marks based on the disparagement clause.  The team has been fighting to keep their registrations alive for several years now, arguing against a finding that their long used trademarks are a violation of the disparagement clause.  Thus, with the current ruling, this should pave the way for their registrations to remain in force.

For others, this ruling comes as a devastating loss. The decision grants applicants the right to receive protection and to use in commerce marks that are offensive, hateful and derogatory. For those on the receiving end of this type of language, seeing these types of marks used in public is a disturbing thought, let alone allowing a Trademark owner to enforce the rights granted to them with a Federal Trademark Registration.

In conclusion, an excerpt from Justice Alito’s opinion as noted below demonstrates the balancing act required in addressing free speech concerns:

“But no matter how the point is phrased, its unmistakable thrust is this: The Government has an interest in preventing speech expressing ideas that offend. And, as we have explained, that idea strikes at the heart of the First Amendment. Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’”

Trademark Protection: Three Questions Answered for Small Businesses

When starting a business, it is important to establish brand recognition for your product and/or service.  In establishing brand recognition, it is essential for a company to protect the use of their brand whether it is a name, logo, slogan or any combination of the three.  A Federal Trademark registration is an excellent way to solidify protection of an up-and-coming brand while also preventing a competitor from operating under a confusingly similar name.

Here are a few common questions we have received from clients over the years regarding Trademarks:

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USPTO EXTENDS AFTER FINAL PILOT PROGRAM

The United States Patent & Trademark Office recently extended the current After Final Pilot Program until September 30, 2015, at which time the program will be up for renewal again. The After Final Consideration Pilot (AFCP) Program 2.0 which originally began on May 19, 2013 aims to reduce the number of Request for Continued Examinations (RCE) filed and increase the collaboration between the applicant and the examiner.

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