trademark strategies redefined: a global perspective on trademark

THOMSON REUTERS
TRADEMARK STRATEGIES REDEFINED
TRADEMARK STRATEGIES REDEFINED: A GLOBAL PERSPECTIVE ON
TRADEMARK REGISTRATION, LITIGATION AND POLICY.
DAAN TEEUWISSEN
PERRY VISCOUNTY
DR. WERNER SULZBACH
PHILIP HARRIS
ABOUT YOUR MODERATOR
Andreas Gerling
Senior Account Manager
Thomson CompuMark
andreas.gerling@thomsonreuters.com
T + 32 3 220 72 70
Duesseldorf, Germany
THOMSON COMPUMARK PRESENTS:
TRADEMARK STRATEGIES REDEFINED
A GLOBAL PERSPECTIVE ON TRADEMARK REGISTRATION,
LITIGATION AND POLICY
Daan Teeuwissen
Managing Partner
Knijff Trademark Attorneys,
The Netherlands
Dr. Werner Sulzbach
European Patent /Trademark Atty
Prinz & Partner, Germany
Perry Viscounty
Philip Harris
Partner
UK and European Trademark Atty
Latham & Watkins LLP, USA
Gill Jennings & Every LLP, UK
TRENDS IN TRADEMARK CLEARANCE
Daan Teeuwissen
Knijff Trademark Attorneys / Multisearch
Managing Partner
CONTENTS
• Introduction
• Trends in registration
• Trends in searching
• Searching solutions
• Conclusions
INTRODUCTION
Daan Teeuwissen
Knijff Trademark Attorneys
Established 1989
15 attorneys, 60 staff
Focus on trademark clearance
Multisearch®
TRENDS IN CLEARANCE?
What are your experiences with conducting full
trademark clearance searches via online databases on
your own?
Recent post on TM blog
TRENDS IN REGISTRATION
• Globalization
• CTM/Madrid systems
• Expansion
• Lower official fees (OHIM)
• Online/E-filing
• Improved service level (PTO’s)
TRENDS IN REGISTRATION
• Ex officio searches discontinued or limited (OHIM,
Benelux)
• Decreasing relative grounds examination (UK)
TRENDS IN SEARCHING
• Internet opens up information
• More and better search engines
• Increasing (free) online databases
• Both official and commercial
TRENDS IN SEARCHING
• Risks:
– ‘Perception of safety’
– Quality, completeness of the data searched
– National/linguistic issues: get local opinion!
– How to manage large amounts of data?
TRENDS IN SEARCHING
• Type/size of applicants/companies:
– Private/small
– Medium sized
– Multinational
• Different approach depending on nature of
business:
– FMGC, Tech., Fashion, Pharma
TRENDS IN SEARCHING
• Risk avoiders: (e.g. pharma) avoiding risk has
priority over costs
• Risk reducers: prepared to search but to certain
extent
• Risk takers: cost (not risk assessment/liability) as
primary driver
TRENDS IN SEARCHING
• Different types of marks selected (per industry) in
naming process
• More descriptive marks > less searching (?)
• Weaker brands (lower value, difficult to enforce)
ECONOMIC TRENDS
• Economic downturn:
– limited investments, less R&D, fewer new products and
services, fewer new marks required
– M&A leads to fewer, bigger companies (e.g. pharma)
– Fewer companies need fewer brands
ECONOMIC TRENDS
• TM departments reorganized / downsized
• Budget cuts
• Conclusion: Same/more work, with fewer people
and less money
• Result: increased creativity, higher risk acceptance,
more conflicts
SEARCHING SOLUTIONS
• Well developed search strategy fitting the industry
• Different approaches e.g.:
– Pharma company looking for name for pipeline product
vs.
– IT company that expands existing name globally
SEARCHING SOLUTIONS
Example: US Pharma co., pipeline names
• Tier approach:
– Identical search home country
– (.com) domain name check
– Screening search key regions (e.g. Top 6 EU,
Japan/China/Australia)
– Full search key regions
– Full search remaining regions
A SEARCH STRATEGY
PhaseI
Scan Searches
Search Scope
Preliminary
(Screening Search)
PIU+CTM+WIPO+US+gTLD (.com)
Secondary
(Screening search)
PIU+CTM+CH+WIPO+US+GE
Scan Search Analysis
Candidate Priorty Allocation
Teams Discuss Candidates to progress
Comprehensive Searches
PhaseII
Preliminary
(Comprehensive Search)
US (Fed/State/CL) incl. Legal opinion
Secondary
(Comprehensive Search)
Step 1
Top 5 EU countries (FR/GE/IT/SP/UK)
+ Overall Opinion
Step 2
Other Strategic Countries + local and/or
overall legal opinion
Step 3
Other Countries + local and/or overall legal
opinion
SEARCH SOLUTIONS
SEARCHING SOLUTIONS
• In house or outsourcing?
• Not only searches, also (internal) reporting,
sharing, archiving
• Not only trademark search, also regulatory, domain
names etc.
• Requires integrated (web based) solutions
SOME CONCLUSIONS
• Easier to register, less reason to search?
• Lot of data available, but be aware of
quality/completeness/local issues
• Develop suitable strategy (define priorities, risk
levels etc.)
Thank
THANKyou
YOU for your attention!
Daan Teeuwissen
Managing Partner
Leeuwenveldseweg
1382 LX Weesp
The Netherlands
Telephone: +31 294 490 900
Fax: +31 294 416 722
d.teeuwissen@knijff.com
www.knijff.com
www.multisearch.info
PRACTICE NOTES ON TRADEMARK
CLEARANCE
A GERMAN PERSPECTIVE
Dr. Werner Sulzbach
Patent Attorney, Partner
Prinz & Partner
TRADEMARK PROSECUTION IN GERMANY
Trademark
Application
Examination
for inherent
registrability
Registration
Applicant
Opposition
proceedings
GROUNDS FOR OPPOSITION
• Registered Trademarks
• New: non-registrered trademarks
• New: business signs
• Company names and trade names
– Example: Daimler AG
• New: Titles of Works
New: Well-known trademarks: taking unfair advantage or
damaging the reputation thereof
CONDUCTING CLEARANCE SEARCHES
• No official objection search
• Pre-opposition negotiations:
– prior right agreement and restriction of scope
• Opposition:
– cancellation of trademark registration
– final decision 2 to 3 years after filing
CONDUCTING CLEARANCE SEARCHES
• Risk of trademark infringement:
– Holder of earlier rights can stop market appearance
• Infringement Claims
– Cease and desist
– Information disclosure / financial accounting
– Damages
• Preliminary injuction
– Court order is enforceable immediately
CONDUCTING CLEARANCE SEARCHES
• Further Consequences:
– Destruction of marketing materials, especially catalogues!
– Possible destruction of products
– Damage to public image, consumers
and retailers
WORST CASE EXAMPLE
• OLG Düsseldorf: 3. Nov. 2009
Lifetec
Medion AG
./.
Litec
Litec Computer GmbH
Start of business: 1996
Likelihood of Confusion (+)
After more than 10 years of local market
appearance
WHICH RIGHTS ARE TO BE SEARCHED?
• Registered Trademarks
• Company Names
Company Names
• Domains
• Designs
• Work Titles
Designs
Trademarks
Domain
Copyrights
Work Titles
CHANGES IN A CLIENT’S BEHAVIOR
CHANGES IN A CLIENTS BEHAVIOR
• Cost cutting by identical screening searches
• Example: TWINCUT – Go ahead?
• But what about:
– TWINOX
– TWINETTE
– TWINSHARP
– TWIN CUSINE
– TWIN
…all owned by Zwilling J.A. Henckels AG, Solingen?
DEVELOPMENT OF SEARCH STRATEGY
• Cost factors in trademark searches:
– Scope of the searches (trademark, companies, designs)
– Similarity or identity search
– Number of countries to be searched
– Number of classes to be searched
– Format of the report
TIME MANAGEMENT
PRODUCT
Branding – Favorite Name
+ preferably 5–10 alternatives
Searches
3–9
months
Discussion of results + decision
Application / Registration
(Trademarks / Domains etc.)
Registration
2 – 9 months
(depending on strategy)
Marketing
Production
THANK YOU
Dr. Werner Sulzbach
Patent Attorney, Partner
Prinz & Partner
Rundfunkplatz 2
80335 München
Telephone: +49 (0) 89 / 59 98 87-0
Fax: +49 (0) 89 / 59 98 87-211
w.sulzbach@prinz.eu
www.prinz.eu
SEARCHING AND CLEARING TRADEMARKS
IN THE UNITED STATES
Perry J. Viscounty, Partner
Co–Chair Global Intellectual Property
Litigation Group
Latham & Watkins LLP
WHY CONDUCT A TRADEMARK SEARCH?
• No affirmative duty to search prior to registering a
trademark
• Seventh Circuit: “Nowhere does the Lanham Act
specifically mandate a pre-application search . . . .
To imply [such] a duty … would appear
inconsistent with the statutory scheme.”
(Money Store v. Harriscorp Finance, Inc., 689 F.2d 666, 671 (7th Cir. 1982))
WHY CONDUCT A TRADEMARK SEARCH?
• Bad faith:
– Failure to conduct a search is not generally, by itself,
sufficient to prove bad faith, but
– the absence of a search could contribute to a finding of
bad faith.
(Savin Corp. v. Savin Group, 391 F.3d 439, 460 (2d. Cir. 2004))
TRADEMARK SEARCHING IS
PREVENTATIVE MEDICINE
• Searching in advance provides evidence to rebut
an argument of bad faith or willful intent
• May avoid:
– Damages (including treble damages)
– Injunction
– Disgorgement of profits
– Attorney’s fees and costs
– Corrective advertising
DEFENDANT’S BAD FAITH INTENT ON
SELECTING THE MARK
• The relevant inquiry seems simple:
– Did defendant, in choosing the mark, “intend to cause
confusion” among consumers?
• Simple or not, courts have interpreted this factor
differently.
– Some courts have held that “Defendant’s failure to
perform an official trademark search, even with the
knowledge that plaintiff marketed its [trademark] under the
[same] name, does not standing alone prove they acted in
bad faith.”
(Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739 at 746 (2d Cir. 1998))
DEFENDANT’S BAD FAITH INTENT ON
SELECTING THE MARK
• “Good faith can be found if a defendant … has requested a
trademark search or has relied on the advice of counsel.”
(W.W.W. Pharmaceutical Co. v. Gilette Co., 984 F. 2d 567 at 575 (2d Cir. 1993))
• “[R]eliance on the advice of counsel after conducting a
trademark search is sufficient to defeat an inference of bad
faith.”
(Lucent Info. Mgmt., Inc. v. Lucent Techs. Inc., 186 F.3d 311, 318 (3d Cir. 1999))
THE PROBLEM
• Which circuit will you be sued in?
• Different law in each circuit.
• Moving forward without a search simply exposes
you to too much risk.
THE SOLUTION:
• Perform a preliminary or “knock out” search and/or
a Full Trademark Search!
PRELIMINARY OR “KNOCK-OUT”
SEARCHES
• Limited search of:
– Federal applications and registrations
– State registrations for identical marks
• Advantages:
– Can be done relatively quickly and inexpensively
– Can potentially be used to rebut bad faith argument
• But does not give you the whole picture
FULL TRADEMARK SEARCHES
• U.S. Full Availability Search covers:
– Federal pending and registered trademarks;
– Existing state trademark registrations;
– Industry common law trade directories, publications,
association listings and business name listings;
– Indices of company information and statistics;
– Company names and corporate availability; and
– Current Internet domain name registrations.
• Web extension products provide additional industry
specific databases
FACTORS TO KEEP IN MIND WHEN
REVIEWING A FULL SEARCH
• Abandoned or cancelled marks
• Supplemental Register
• Section 44 applications
• Individual state database limitations
FACTORS TO KEEP IN MIND WHEN
REVIEWING A FULL SEARCH
• Marks need not be identical!
• Similarities can include phonetic similarity,
underlying meanings, as well as translations:
– Corrupted spellings: Kwik vs. Quick
– Visual similarity: Steinway vs. Steinberg (for pianos)
– Phonetic similarity: Energy vs. NRG
– Underlying meanings/synonyms: Hurricane vs. Tornado
– Equivalents in other languages: Good morning vs. Buenos
Dias
AGGRESSIVE SENIOR USER
• Full search looks clear
• Registration is issued
• You are in the clear, right?
• WRONG!
• Senior user can still challenge your mark
THE PROBLEM
• Marketing has come up with a fantastic new
product name
• Full trademark search shows no potential conflicts
• Sounds great, right?
• Misappropriated from competitor?
THE SOLUTION
• Trademark searches by themselves do not address all
the potential pitfalls
• Any complete trademark search requires investigation
into:
1. What does the mark mean?
2. How do you pronounce it?
3. Does the mark have any meaning within the industry or
in any foreign language?
4. Who created the mark?
5. How was the mark created?
6. Who are your competitors?
THE SOLUTION
7. Will the mark be used with a design or logo?
8. What goods and services will be used in connection with
the mark?
9. Do you plan to expand the use of the mark to other
products or services?
10. Where do you plan to manufacture, distribute, advertise
and sell the product?
11. How do you plan to market this product or service?
12. Will the mark be used as a corporate name or a domain
name?
SCENARIO 1
Your client intends to launch
a new coffee drink called
QUICK TWITCH
PRELIMINARY SEARCH RESULTS
• Two similar marks: “Quickly Twitch-It Too” and “Twitch Master 500,
Quick Shakes”
• None of the goods or services cover coffee or beverages
• Move on to full search
FULL SEARCH RESULTS
• International company called Got the Shakes, Inc. owns a family of
“Twitch” marks, such as “Twitch Free,” and “Go Twitch,” including
various design marks, for nutritional supplements.
• Got the Shakes, Inc. has opposed all marks that contain the word
“Twitch” that were filed in connection with nutritional and dietary
supplements, and food and beverage products.
RISK CONCLUSION FOR SCENARIO # 1
Even if another mark is not identical or similar, does
not share the same marketing channels, and there is
little chance of actual confusion to support a claim of
“likelihood of confusion,” be aware of the Aggressive
Senior User.
SCENARIO 2
Your client created new designs for wigs, hair pieces
and hair extensions and wants to start marketing the
products under the name BARELY NOTICED.
PRELIMINARY SEARCH RESULTS
•
RISK CONCLUSION FOR SCENARIO # 2
• Weak mark
• Highly diluted mark
• If adopting an identical mark for a similar product or
service, it is likely you will receive a cease and desist
letter or a lawsuit from one of the prior users.
GENERAL CONSIDERATIONS
• At a minimum, always conduct a preliminary or “knockout” search.
• It is highly recommended to order a full trademark
availability search.
• Go beyond the full search results and conduct
additional research.
• In reviewing the search results, be conscious of not only
what marks your client might be infringing, but who
holds those marks and how aggressive that holder has
been in the past.
THANK YOU
Perry J. Viscounty, Partner
Co–Chair Global Intellectual Property Litigation Group
Latham & Watkins LLP
LATHAM & WATKINS LLP
650 Town Center Drive 20th Floor
Costa Mesa, CA 92626-1925
Direct Dial: +1.714.755.8055
Fax: +1.714.755.8290
perry.viscounty@lw.com
http://www.lw.com
GENERAL TRENDS
• Budgets/Commoditization/Discounting
• Official – v – professional fees
• Growth of the private client
SEARCHING TRENDS
• Increased realism
• Pre-instruction enquiries – self-searching
• Search targeting
SEARCHING TRENDS
• Common law searches
• “File and forget”
• China/India
SEARCHING TRENDS
• Impact of OHIM
• Precedent consistency/quality?
• Approaches on risk assessment
SEARCHING TIPS
• The Darts-IP comparison tools
• Use of UK companies House web-check facility
WORKING WITH BRAND OWNERS
• The changing relationship in the UK
• Client care
COST AND TIME TO REGISTER
• CTM – forum of choice for many filers
• UK- private client trend
• Internationals- China
REDUCING/AVOIDING DISPUTES
• Search comprehensively!
• Specification limits at outset
• Commercial approach to co-existence
• Up-front appraoches
REDUCING/AVOIDING DISPUTES
• Attack as defense
• Trade Mark chess – leverage the assets
• The UK Patents County Court and the UKIPO
Mediation scheme
THANK YOU
Philip Harris, Partner
UK and European Trade Mark Attorney
Solicitor
Gill Jennings & Every LLP
Broadgate House
7 Eldon Street
London EC2M 7LH United Kingdom
Telephone: +44 (0)20 73771377
Fax: +44 (0)20 73771310
pwh@gje.co.uk
www.gje.co.uk
Q&A
For more information on any Thomson CompuMark
products or services see:
http://compumark.thomson.com
Daan Teeuwissen
Managing Partner
Knijff Trademark Attorneys,
The Netherlands
Dr. Werner Sulzbach
European Patent /Trademark Atty
Prinz & Partner, Germany
Perry Viscounty
Philip Harris
Partner
UK and European Trademark Atty
Latham & Watkins LLP, USA
Gill Jennings & Every LLP, UK
IN CLOSING
This is all the time we have for today. Again, if you
have additional questions you can contact Andreas
Gerling at Thomson CompuMark
andreas.gerling@thomsonsreuters.com
Thank you for attending and we hope to see you
again at our future webinars. Thank you very much.