127 W Fairbanks Ave, Ste 483, Winter Park, FL 32789
info@lipscombpartners.com
(786) 431-2228

Trademarks

TRADEMARKS


WHAT IS A TRADEMARK?

Any word, symbol, logo, tag line, color scheme, or even a smell that identifies the source or origin of goods may be a trademark. Similarly, any of these things which identify a service may be a service mark, e.g. the service of operating retail hamburger restaurants. Legally, there is very little distinction between the way trademarks and service marks are obtained or enforced, and herein the word trademark will be used to refer to both types of marks. Common examples of trademarks include the word MCDONALDS, the word BIG MAC, and the golden arches logo. A trademark may last in perpetuity, and only expires when it is abandoned.

Historically, trademark law has been aimed at preventing consumers from becoming confused about the source or origin of a good or service. In other words, the law wants to prevent a person from buying a product or service, for example, a hamburger thinking it is from McDonalds when in actuality it was being purchased from an infringer McDomalds. Trademark infringement occurs when an appreciable number of consumers are likely to become confused about the source or origin of a product or service. More recently, trademark law has also begun to protect the value of a mark. This is accomplished through laws that impose penalties for diluting famous marks. Dilution can occur through tarnishment or blurring.

In Florida, Trademark law is governed by common law, federally registered marks are governed by 15 U.S.C. Ch. 22, and state registered marks are governed by Chapter 495, Florida Statutes. Trademark suits, unlike suits regarding patent and copyrights, may be brought in either state or federal court.

WHAT ARE THE TYPES OF MARKS?

Marks are classified as either (a) generic, descriptive, suggestive, arbitrary, or fanciful (a/k/a as coined). For a definition of each type of mark please use the hyperlink.

Generic marks are not really marks at all. Rather, a generic term is one that is commonly used as the name of a kind of good or service. Unlike a trademark, which identifies the source of a product, a generic term merely identifies the genus of which the product is a species. Generic names are not trademarks and are not protectable, therefore, they are regarded by the law as free for all to use. Examples include the words Milk to describe the drink Milk, cup to describe a container capable of holding liquid and Apple to describe the fruit, etc.

Descriptive marks are descriptive of the intended purpose, function or use of the goods, the size of the goods, the class of users of the goods, a desirable characteristic of the goods, or the end effect upon the user. Examples include FRIENDLY, DEPENDABLE, and PREFERRED. Descriptive marks are not automatically protectable, but require initially, that one prove that the mark has acquired secondary meaning, i.e. proof that through advertising and use, the relevant universe of consumers associate the mark with the trademark owner.

Suggestive marks defy easy definition. Three tests have evolved to determine whether a mark is suggestive: the imagination test (how much imagination is required by the customer to get some description of the product from the term); the competitor’s need test (is the mark needed by competitors to describe their goods); the competitors’ use test (to what extent is the mark used by others on similar products.) Suggestive marks include ARTYPE for cutout letters for artists, COPPERTONE for sun tan oil, FROM MAINE’S COOL BREEZE TO THE FLORIDA KEYS for a moving service. . . .”

Arbitrary marks comprise those words, symbols pictures, etc. that are in common linguistic use but which, when used with the goods or services in issue, neither suggest nor describe any ingredient, quality or characteristic of those goods or services. “Arbitrary” means that the ordinary meaning of the word mark is applied to goods in a totally arbitrary and non-descriptive sense. For example, IVORY soap is not made of ivory, OLD CROW whisky is not distilled from old crows . . . .” [APPLE COMPUTERS are not made from Apples]. (Parenthetical added)

Fanciful marks consist of “coined” words that have been invented or selected for the sole purpose of functioning as a trademark. Such marks comprise words that are either totally unknown in the language or are completely out of common usage at the time, as with obsolete or scientific terms . . . KODAK, POLAROID and XEROX are examples of fanciful or coined marks.

WHAT ARE THE REMEDIES FOR TRADEMARK INFRINGEMENT?

Trademark rights entitle the owner to prevent another person from using a mark which creates confusion with the owner’s mark.  Further, if the trademark owner proves infringement, in Florida, the infringer will likely have to “disgorge” its profits from the infringing sales.

HOW DO YOU OBTAIN TRADEMARK RIGHTS?

Obtaining Trademark Rights:  Generally, the first person to use a protectable mark for a particular good or service in a specific trading area will develop trademark rights in the mark in that trading area.  Marks may also be reserved by submitting an Intent to Use  (“ITU”) application to the United States Patent and Trademark Office.  The purpose of an ITU application is to allow people to safely invest in creating a brand, e.g. by acquiring signs, ordering business cards and other forms of advertising, branding products with the mark, etc. An applicant who submits an ITU application must commence using the mark before the USPTO will issue a registration for the mark.

HOW DO YOU OBTAIN A TRADEMARK REGISTRATION?

In order to obtain a geographically unrestricted registered U.S. trademark, one has to be the first entity to use the mark in interstate commerce on a particular type of good or service. Alternatively, one may reserve a mark he or she intends to use by submitting an intent to use (ITU) application.

WHAT IS THE PROCESS AND COSTS ASSOCIATED WITH TM REGISTRATION?

The federal trademark application process begins by submitting an application to the United States Patent and Trademark Office, which is assigned to an examining attorney. The examining attorney may issue an office action or submit it for publication. Unlike patents, however, once published, a third party, with standing, may challenge an applicant’s right to obtain a registration. Any such challenge, called an Opposition Proceeding, is a de facto litigation including, pleadings, discovery, motions and written testimony (as opposed to live testimony during a trial.) The costs associated with any particular opposition proceeding vary greatly depending on the aggressiveness with which the proceeding is pursued by the opposer. Absent an opposition or significant office action, the national average fee charged by attorneys for drafting and securing a trademark registration is $1200.

WHAT ARE THE BENEFITS OF TRADEMARK REGISTRATION?

Federal registration entitles the registrant to claim constructive use of the mark throughout the country and puts the world on constructive notice that the mark is owned by a particular person. If a geographically unrestricted trademark is issued, the owner has the presumptive right to exclusively use the mark in the U.S., and all of its territories, on the goods or services stated in the description of goods and services on the registration.  This presumption may only be overcome by a showing of pre-registration use in a particular geographic area. The registration also acts as constructive notice to the world that one is using the mark and intends to do so throughout the entire country. For purposes of priority determinations, a registrant may cause a junior user who commenced its use of the mark in a remote geographic territory to cease using the mark after the registrant’s actual reputation has expanded in the junior user’s territory. A party may still infringe a registered mark without offering the specific goods and services specified in the registration’s description of goods and services; however, the more closely related the parties’ goods and services, the more likely there is an infringement. Registration is Florida provides similar but fewer benefits than federal registration. This is because, (a) it only covers the State of Florida, and (b) the Secretary of State does not perform a significant pre-registration likelihood of confusion analysis.

WHAT CONSTITUTES TRADEMARK INFRINGEMENT?

To prevail on a claim of infringement one must prove that the mark is: (a) protectable; (b) that the owner is the senior user vis-à-vis the alleged infringer, and (3) the infringer’s use of the mark is likely to cause confusion among an appreciable number of consumers.

WHICH MARKS ARE PROTECTABLE?

Suggestive, arbitrary and fanciful marks are deemed “inherently distinctive” and thus are protectable without proof of secondary meaning, i.e. proof that the public associates the mark with its owner. Federally registered marks are presumed to be protectable. This is because the USPTO makes a determination about whether the mark is inherently distinctive and if it is not, the applicant must produce evidence that it has acquired secondary meaning.

HOW DO YOU DETERMINE IF YOU ARE THE SENIOR USER?

A person is the senior user if his or her reputation has extended into a particular geographic territory. There is a small caveat to this rule known as the “doctrine of natural expansion.” Through that doctrine, a person may be awarded rights in territories in which he would naturally expand. The rules governing priority are also equitable, insofar as they change if there are unusual facts, e.g. a rapidly expanding junior registrant.

HOW DO YOU DETERMINE IF THERE IS A LIKELIHOOD OF CONFUSION?

The Eleventh Circuit and the Florida Supreme Court use similar although slightly different tests to determine if there is a likelihood of confusion.  Specifically, the Eleventh Circuit uses a seven factor test to analyze whether there is a likelihood of confusion. Specifically, the seven factors are: (1) the type and strength of the plaintiff’s mark; (2) the similarity of the parties marks; (3) the similarity between the products or services; (4) the similarity of the sales methods; (5) the similarity of advertising methods; (6) the defendant’s intent; and (7) evidence of actual confusion. Most trademark litigation is conducted in Federal Court and consequently there is a much greater depth of federal decisional authority discussing these factors. Further, Florida Statutes direct state courts to look to federal law for guidance on trademark matters. For a more detailed understanding of any particular factor click the hyperlink to that factor.

WHAT ARE TRADEMARK DAMAGES?

The most frequent remedy for trademark infringement is disgorgement of the infringer’s profits and a permanent injunction.  It is the infringer’s burden to prove which of its profits are not attributable to the infringement. The underlying policy rationale for awarding profits is the prevention of unjust enrichment. The theory is that the infringer is making sales that should have gone to the trademark owner. Some jurisdictions require proof of intentional infringement to be awarded profits, however, at present, the Eleventh Circuit does not require that the infringement be intentional. If there is an intentional infringement or counterfeit goods enhanced damages may be obtained. Additionally, attorneys’ fees may be awarded for intentional infringement.

A party which is found liable for infringing another’s trademark will likely have to disgorge the profits it made on all of the infringing goods or service. Also, willful infringers are liable for three times the profits they made. Finally, preliminary and permanent injunctive relief may be granted.

WHAT ARE THE STAGES OF TRADEMARK LITIGATION?

The consummate chess match, trademark litigation begins by the filing of a complaint. Often, formal litigation is preceded by one or more pre-suit demand letters, also known as cease and desist letters. Depending on how it is worded, the recipient of a pre-suit demand letter may have standing to file a complaint seeking a declaratory judgment of non-infringement. Through this means, the recipient can choose the venue of the suit. Accordingly, if the Defendant is not in the same jurisdiction as the Plaintiff, the Plaintiff should consider filing suit to establish venue, and thereafter serve the letter with the complaint.

    1. Check Your Insurance Policy: If you are sued for infringement, you should show your attorney your general commercial liability insurance policy because the advertising injury clause in the policy may contractually obligate your insurer to indemnify and defend you from the suit. Further, if your insurance policy does cover trademark suits, you may have the right to choose your attorney.
    2. Motions for Preliminary Injunction: Trademark litigations frequently involve motions for preliminary injunction, and often settle after a ruling has been given on these motions. A good motion for preliminary injunction sets forth the evidence establishing each of the elements of the prima facie case and makes a well founded likelihood of confusion argument. Evidence may be taken before the court enters a preliminary injunction. If a preliminary injunction is entered, courts usually require the Plaintiff to pay a bond.
    3. Discovery: Trademark litigations often result in the exchange of extensive paper discovery. Indeed, the issues raised in the typical trademark litigation touch very nearly every aspect of a business. Accordingly, among various other types of documents, litigants should expect to produce representative samples of all advertisements and promotional materials, documents regarding first use, documents regarding the scope of their marketing, documents regarding the quality and quantity of the goods or services they sold, documents regarding the geographic scope of their use of the mark, and documents regarding their profits.
    4. Settlements and Mediation: Most trademark litigations are settled between the attorneys or are settled at mediation. Typical settlement agreements address, among other things, whether the alleged infringer will be permitted to continue to use the mark, and if so under what restrictions. Also, settlements frequently involve the exchange of money.
    5. Motions for Summary Judgment: If a case does not settle during the discovery phase then there is a good chance that one or both of the parties will file motions for summary judgment. These motions assert that there is no genuine issue of material fact and that the movant is entitled to judgment as a matter of law. If denied, these motions typically form the basis of a trial brief. Also, since they force the opposing party to lay down their cards, motions for summary judgment are often a good idea even in instances where summary judgment will likely be denied.
    6. Trial: Trials in trademark cases should be kept simple; however, they are often one or two week long events.  Survey experts, marketing managers, confused people, witnesses to confusion, and business owners or high ranking managers all testify. Jury instructions are also complicated and the charging conference is frequently a protracted event.  Consequently, bench trials are sometimes agreed upon.

WHAT ARE TRADEMARK TRIAL AND APPEAL BOARD (TTAB) PROCEEDINGS?

There are two basic types of TTAB proceedings: (a) an opposition proceeding and (b) a cancellation proceeding. In an opposition proceeding, the opponent is arguing that that the United States Patent and Trademark Office (USPTO) should not issue a registration because the mark is confusingly similar to the opponent’s mark, and in a cancellation proceedings the petitioner is alleging that there was either fraud on the USPTO or that the registration was erroneously issued because the petitioner had prior rights in the mark. The process used during an opposition or cancellation proceeding is similar to a litigation but evidence is proffered to the Board by paper submissions instead of live testimony.