Intellectual Property

This week we are discussing ways you can use a third party’s mark to identify the third party’s goods or services while advertising your own.  For example, a dental office wants to let potential patients know that it uses a specific brand of dental veneers.  The law allows XYZ Dental to factually state “XYZ Dental specializes in the fitting and application of ABC® brand veneers.”  This type of use is known as nominative fair use and as with comparative advertising and descriptive fair use, there are rules that need to be followed.

To qualify as proper nominative fair use, the use must not create a likelihood of confusion and the use cannot imply sponsorship or endorsement by the trademark owner where none exists.

The courts have set out a three part test to determine if a use is likely to fall within the rubric of nominative fair use.

  1. The trademark owner’s product or service must not be readily identifiable without use of the trademark.  It is recognized that there are times when it is necessary for a company to refer to a third-party product or service by its trademark.  In those circumstances the law does not require individuals or companies to use “absurd turns of phrase” simply to avoid trademark liability.  XYZ Dental does not need to state that it fits and applies the dental veneers identified by the first three letters of the alphabet.  It can simply factually state it fits and applies ABC dental veneers.

Last week we discussed ways that you can use a competitor’s mark in comparative advertising.  This week we are discussing ways you can use a competitor’s mark in a descriptive manner under the doctrine of Descriptive Fair Use.   In this type of use, the mark is not being used as a trademark, which greatly reduces or eliminates the possibility of the use being found to be trademark infringement.

Under the doctrine of Descriptive Fair Use, a party, even a direct competitor, may use another party’s descriptive trademark to describe their own product or services.  Descriptive Fair Use requires:

  1. That the mark being used actually describes a person, place or attribute of goods or services; and
  2. The mark must also be used in the normal course of language.

In addition, the mark must be used in the text portions of an ad and not as a banner or in any other manner that sets it apart from the other words in the sentence or paragraph in which it is used. 

Today we are resuming our Branding 101 series!

As we discussed previously, a trademark audit is an important inventory tool that should be used to be sure that the trademark assets of the company are being properly used and protected. Another important function of a trademark audit is to be sure that you are using only your own trademarks; or, if you are using your competitors’ marks, that such use is correct and proper.

In general, a company should only be using its own trademarks. However, there are some circumstances where it is acceptable to use a third party’s trademark in your advertising. These exceptions are often referred to as “fair use” of the other’s mark. There are several fair use exceptions that will be discussed over the next couple of weeks. Today, we will start with a discussion of the proper way to use a competitor’s trademark in a comparative advertisement.

It is possible to avoid trade mark infringement while using the registered trade mark of another company in a comparative advertisement. However, there are rules and guidelines that have to be followed to avoid liability. In addition, apart from the trademark infringement issues, comparative advertising is prone to being considered misleading or deceptive, unless it is done carefully.

A trademark audit is at its most basic an asset inventory.  But instead of tracking down and counting blood pressure monitors, otoscopes and scalpels you are tracking down words, phrases and pictures (logos) that you are using to promote your business to the public. And instead of checking and noting the condition of these items and culling out those that are beyond repair or use, your trademark auditor will review how the marks are being used to be sure such use is proper and all of these marks have been searched and cleared for use. It may also find that you are using marks that no longer conform to your desired public image or Mission Statement and that such marks need to be retired.

A trademark audit should do more than just look at the marks that the business believes it owns.  A trademark audit should look at all of the company’s materials that are presented to the public and  review them for any words, phrases and pictures (logos) that are used to identify your company’s goods and services. A trademark audit will often identify terms that the auditor views as trademarks that the company may not realize it is using.  You might wonder – how can a company not know it is using a particular trademark?  This could be because marketing designed and distributed a flyer or brochure but did not review the terms being used – possibly due to a short deadline or perhaps they thought it would only be used “once”.  The audit may also identify terms that have been used for a long time that have simply fallen through the cracks.

Are human genes patentable?

Late last week, the U.S. Supreme Court held that isolated segments of naturally occurring DNA are not patent eligible, while synthetically created DNA, such as complementary DNA (cDNA), is patent eligible. In the wake of this decision, patent portfolios should be reviewed to determine whether patents having claims to isolated DNA…

Join three of our top IP attorneys for a discussion on intellectual property issues that impact healthcare companies.  For those of you who have followed our Branding 101 series, we are excited to move beyond branding and address other IP issues.   The webinar will include the following general intellectual property topics, with a particular focus on healthcare companies:…

A trademark is an adjective.  It is not a noun or a verb.  Why?  Because, a trademark’s purpose is to identify the source or origin of a product, NOT to identify the product itself.  You have gone to great lengths to find a mark that is not descriptive of your product, and we have discussed that generic marks can never be a trademark, so you do not now want to use your mark in such a way that you cause to become descriptive or generic.

This tends to be more a problem for the company coming out with a first-of-its-kind product.  Consumers are already unsure what the product is, and without careful marketing that new moving stairway becomes an “escalator” (originally a trademark of Otis Elevator Company); all coin operated laundries become “laundromats” (originally a trademark of Westinghouse); and all rolling toys on a string are now “yo-yos” (although still a trademark in Canada).

Newer situations that almost resulted in a successful brand name becoming the generic term for the product itself include “KLEENEX® brand tissues;” “Band-Aid® brand bandages” and “Rollerblade ® brand in-line skates.”  Yes, you want your brand to be successful; however, not to the point where it becomes synonymous with the product itself.

The mark has been chosen, the trademark search was clear, and it has been decided that the mark should be registered. The next step in the process is straightforward – file an intent to use (ITU) trademark application.

It is not necessary or recommended to wait until the mark has been used to file the application.    An application can be filed based on your bone fide intent to use the mark in the future.  The application will not register until after use begins. Once use begins, a separate statement is filed claiming this use. After the application is approved by the Examiner and has been published for opposition, a Notice of Allowance will issue.  The applicant then has 6 months to file either a statement of use, or to request a 6-month extension of time.  A total of 5 extensions of time can be requested – up to a total of 3 years after the date the Notice of Allowance issues. If use has not begun after the expiration of the 5th extension of time, the application will abandon as a matter of law.

The benefit of filing an ITU application is that once use begins and the application is registered the owner can claim a constructive date of first use as of the filing date of the application.  This could add months or years to the start date of your rights. There are some additional costs and filing fees associated with the filing of the use statement and/or extensions of time to file the use statement; however these are offset by the right to claim an earlier starting point for your rights.

After choosing the mark itself, an important part of the registration process is crafting the identification of goods or services.  You want the identification to be both broad and specific.  If the mark will be used as an overall mark for your entire organization, the identification may be straightforward “hospitals and medical services.” If the mark will be used for a specialized service offering, it may be necessary to develop a more specific identification.

Once you have selected a trademark and it has been cleared for use, you should consider filing an application to register the mark with the United States Patent and Trademark Office (USPTO).  There are a few questions that might come to mind when this recommendation is made:

  • Why should I register my trademark?
  • When should I register a trademark?
  • Which of my trademarks should I register?

These questions are addressed below.

Why should I register my trademark?

Trademark rights in the United States are, after all, based on use of the mark in commerce and not on registration.  A registration is not required to use a mark, obtain rights in a mark, or to sue for trademark infringement.  Why then would you spend valuable marketing dollars on obtaining and subsequently maintaining a Federal Trademark Registration?  There are a number of good reasons to proceed with a registration.

First, yes – you can obtain common law trademark rights in a mark simply through use.  However, your common law rights will be limited to the geographic location where you have had actual use. A trademark registration will automatically expand your rights geographically to include the entire United States, except for any areas where there is a prior user on the day the mark is registered.  What does that mean?