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Use of Trademarks in the U.S.

As North America brings its intellectual property laws in line with the United States-Mexico-Canada Agreement (USMCA), the way trademarks are handled in Mexico and Canada has recently changed. While Mexico now requires a business to use its mark to obtain a Mexican trademark registration, Canada no longer requires the use of a mark in order to obtain a Canadian trademark registration.

A business may spend significant resources attempting to use a trademark in the U.S., but ultimately fail to satisfy legal and technical requirements. Not only are such attempts wasteful, but they may also pose an obstacle to pursuing an otherwise legitimate trademark registration. To successfully register a trademark in the U.S., a business is required to use the trademark on or in connection with its products and/or services, but the law has different requirements for each.

U.S. TRADEMARKS FOR PRODUCTS

For a trademark associated with products, advertising alone, such as use in a brochure or on a website, is not normally enough. The mark must be placed in any manner on the products or on the containers of the products, or on tags or labels affixed to the products. If the nature of the products makes such placement impracticable, then it may be acceptable for the mark to be used on displays associated with the sales of the products. Additionally, the products must be sold or transported in interstate commerce.

The simplest way to satisfy this requirement is to put the trademark directly on the products, such as by incorporating the mark into the mold of molded products, stamping or printing the mark onto the products, or applying a tag or label to the products carrying the mark. The mark could also be applied to the packaging or container of the products.

For an example of displays associated with the sales of a product, the mark can appear with the product in a catalog or on a website, but there are specific requirements for those uses. If used in a catalog, the mark must be accompanied by a description or picture of the product, and the same catalog page generally must include ordering information such as a phone number or a web address. If used on a website, the mark must still be accompanied by a description or picture of the product, and the webpage must include the direct ability to order the product, such as a “Buy Now” or “Add to Cart” button on the webpage.

U.S. TRADEMARKS FOR SERVICES

For a trademark associated with services, the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in interstate commerce. That is, the services must be rendered in more than one state, or in some other way in interstate commerce, or in the U.S. and a foreign country, and the company rendering the services is engaged in commerce in connection with the services.

ENSURING CORRECT U.S. TRADEMARK USE: THE ABCD TEST

To ensure that your trademarks, aside from being placed on the products or used in connection with the sale of services, are being used correctly, use this ABCD test:

  1. Adjective: Use the trademark in the position of an adjective describing the product, followed by the common descriptive noun for the product. For example, use “KLEENEX tissue” not simply “a KLEENEX,” or “XEROX photocopier” rather than simply “the XEROX.”
  2. Brand identification: Properly identify the status of the trademark as a brand with the appropriate trademark symbol e.g., ® for a registered mark and ™ for a mark not yet registered.
  3. Consistency: Be strictly consistent in displaying the mark. If the trademark is punctuated, capitalized or colored in a certain way, it is critical to maintain the same formatting. Any change of any of those properties could be considered a change to the mark, that is, adopting a different mark. Such consistency will also help ensure that others recognize that this is a trademark and not just another word. While it makes sense for a company to adopt a different mark from time-to-time, such changes should only be done intentionally, after careful thought and transition planning, rather than by accident or in a casual attempt at creativity.
  4. Distinctive: Use the mark in a way that is distinctive, that sets it off from surrounding text, such as in a different typeface, color or capitalization
Article by;

Nicholas A. Kees
Alexander C. Lemke
Godfrey & Kahn S.C.

IP Introduces Fast Track Trademark Registration and Renewal

On 23 February 2021, the Department of Intellectual Property issued a Notification introducing a fast track examination process for trademark registration and renewal. This notification is issued with the aim of expediting trademark registrations and the renewal process, thus enhancing and facilitating trademark protection for both the private sector and general public; enabling them to build a conductive business operation.

For the fast track trademark registration, an application for trademark registration will be examined within six months from the filing date, although the publication period and grant of the registration certificate may not be completed in said six-month period. The trademark application eligible for the fast track process must comply with the following conditions:

  • The lists of goods/services must not exceed 30 items.
  • The specifications of goods/services must all conform to the recommended acceptable specifications of the Department of Intellectual Property.

For the fast track trademark renewal, each application will be examined within 45 minutes from the time of submission. The renewal application eligible for fast track renewal must meet the following conditions:

  • The lists of goods/services under the trademark registration must not exceed 30 items.
  • There must be no amendments to the specifications of goods/services under the trademark registration.
  • The renewal application must be submitted at the Department of Intellectual Property, Ministry of Commerce, by the trademark owner or appointed agent. In the latter case, the power of attorney must state that the appointed agent has the authority to receive a certificate of registration.
  • The applicant or appointed agent must request at the time of submission that he/she would like the Trademark Registrar to urgently examine the renewal application and issue the certificate of trademark registration renewal.
  • The official renewal fees must be fully paid. In the event that the renewal application is defective but possible to be corrected within the date of submission of the renewal application, the Registrar shall order the amendment and accordingly grant permission for trademark registration renewal on the date of submission of the renewal application. However, if the application cannot be resolved by the date of submission of the renewal application, the Registrar shall examine the renewal application within the period specified in the public manual (normal process), according to the Licensing Facilitation Act B.E. 2558 (2015).

Please note that this Notification applies to all types of marks, i.e. trademark, service mark, certification mark, and collective mark.

Trademark Protection for Product Shapes and Containers

American law has long granted trademark protection to the shapes of products and containers. Perhaps the most famous example is the instantly recognizable Coca-Cola bottle, which is almost as important a trademark as the soft drink company’s stylized name logo (Trademark protection for the product shapes and containers should not be confused with the safeguards afforded by design patents).

But in one case, actions taken by two well-known companies brought the concept of product shapes into the headlines.

Zippo Manufacturing Co. announced that it received trademark protection for its cigarette lighters’ distinctive rectangular shape in late 2002. The Pennsylvania manufacturer informed wholesalers and retailers that it intends to take action against merchants found selling lighters designed to mislead consumers by infringing on Zippo’s trademarked shape. The company contends that its authorized distributors and retailers have lost millions of dollars in profits over the years as a result of the sale of copycat products. It demanded that all infringing merchandise be removed from store shelves.

In another claim of trademark protection for a distinctively-shaped product, General Motors Corporation recently filed suit against Avanti Motor Corp., claiming that Avanti’s Studebaker XUV infringes on the distinctive shape of GM’s popular Hummer H2. GM argues that consumers will be confused by the similarity of the design of the two vehicles in violation of trademark law. Avanti responded that the design of the XUV is clearly distinct from that of the H2 and therefore causes no confusion among the buying public.

Traditionally, trademark protection is granted only to products or containers with a shape that is easily recognized by the public. In legal language, a trademark exists if the shape has developed a “secondary meaning” indicating it is associated with the company of origin. Although the above examples might seem to indicate that trademark protection only exists for well-known products or containers that have been around for an extended period of time, business owners should be aware that protection is becoming easier to obtain. Today, a distinctive shape may be seen as worthy of trademark protection after a short period of time on the market.

The implications of trademark law for container and product shapes affect businesses across all sectors of the economy. While manufacturers are protected against copying of their products and containers’ shapes, businesses must also be careful not to copy the design of a competitor’s product. In addition to manufacturers, merchants can be held liable for significant damages for selling merchandise that infringes on another company’s trademark.

Design Patents vs. Trademark

Although product shapes and containers are eligible for protection under trademark law, they may also be protected by a design patent as well. Not surprisingly, the coverage afforded by design patents differs from that provided by trademark law.

Design patents prohibit a third party from making, selling or using a product that infringes on a patented design. There is no requirement that companies show a product or container’s content is in any way similar to that of the protected design. Under trademark law, however, it is necessary to show that the infringing product or container could be confused with that of the company seeking the protection of the law. The buying habits of consumers are crucial in proving trademark infringement occurred.

William H. Shawn Co-Managing Partner, ShawnCoulson

Update of the Romanian Trademark Law

With a delay that nearly triggered sanctions from the European Court of Justice at the request of the European Commission, Romanian legislative body fulfilled its obligation to implement the EU Directive for approximation of the trademark laws in the Member States; the law came into effect in July.

The new law includes important changes based on the directive, inter alia:

  • the definition of trademarks has been updated for the “digital age”,
  • among other clarifications and simplifications of the registration procedure, some terms have been shortened,
  • extent of trademark protection depends on description of goods/ services,
  • counterfeit goods, found on Romanian territory in transit, are now subject to possible sanctions,
  • new legal remedies on cancelation of trademarks,
  • updated list of reasons for rejecting requests for trademark registration and so on.

The directive is aimed at the modernization of the trademark law EU-wide; with its implementation, the Romanian legislation is brought to the required level. The new law introduces a more efficient registration procedure, shorter periods and extended contestation options, which overall increases the protection for existing and future trademarks. Corresponding procedure rules should also be implemented in the near future.

More information in the link below:

https://stalfort.ro/wp-content/uploads/2020/10/20201005_MM_Update_of_the_Romanian_trademark_law_MM.pdf

Trade Marks, Designs & Copyright: IP Review

Welcome to our Annual Review of developments relating to trade marks, copyright and designs during 2019. We have selected a number of the reports that we have published over the course of the last 12 months, commenting on issues ranging from the latest guidance on the boundaries of trade marks and designs through to a number of interesting questions on copyright protection in the light of developing technology and business models. This year’s Review mentions a couple of cases in which we acted, including in a website blocking action for Nintendo in relation to sites selling devices seeking to circumvent encryption measures, and an important case for Sky in the European Court of Justice relating to trade marks.

We also include a brief update on the Brexit position. Now that the Withdrawal Agreement has been ratified and the UK has left the EU, we are in the transition period. During this period, which will end on 31 December 2020 (unless it is extended, albeit the UK Government has said this will not happen), the status quo will be preserved. There will be no change in how IP rights will be protected and enforced during the transition period and, more specifically, EU Trade Marks and Designs will continue during the transition period to extend to the UK. As part of our Brexit preparations, we have set up Mishcon de Reya IP B.V., a trade mark practice based in The Netherlands. Mishcon de Reya IP B.V. is a wholly owned subsidiary of Mishcon de Reya LLP and will allow us to ensure continued representation in relation to EU Trade Mark and Design matters before the EUIPO following the end of the transition period. We will continue to update you on Brexit developments throughout the year.

Click here to view the pdf version of our Review.

We hope you enjoy reading the Annual Review. Please get in touch if you have comments or queries on any of the topics raised.

Trade Marks

Compared to previous years, trade mark law and practice in 2019 focussed to a much lesser extent on questions of infringement and enforcement. Instead, the key cases raised questions relating to clarity and precision of trade mark specifications (and whether this can be a ground of invalidity of a registered mark), and alleged bad faith during the trade mark application process. […read more]

Copyright

In a continuing trend, 2019 saw the CJEU issue a series of decisions following referrals from Member State national courts on various issues under the Copyright Directive and related Directives. This looks set to continue in 2020 with the CJEU due to hear more copyright referrals. […read more]

Design

Alongside an important referral to the CJEU relating to ‘first disclosure’ for Unregistered Community Designs, the implications of the Supreme Court’s Trunki decision continue to be felt in the UK Courts. […read more]

Brexit

The UK left the EU on 31 January 2020.  The EU and UK reached a revised Withdrawal Agreement which includes a transition period ending on 31 December 2020.  During the transition period, the status quo continues to apply in relation to IP rights, with EU trade marks and designs continuing to extend to the UK. […read more]

Other developments

Other interesting developments over the last year relate to competition law considerations in relation to brands and online marketplaces.