Jonathan Pink — Entertainment, Internet and New Media Partner at Lewis Brisbois, LLP Rotating Header Image

Who Wants to be an IP Attorney?

So, I’m in my office yesterday when the telephone rings. A frantic voice on the other end is desperate to find out how she can patent the copyright in her trademark.

I hang up on her.

Now, while I realize that a client’s inability to draw fine distinctions between sometimes overlapping areas of intellectual property law is not quite as bad as right wing nuts wearing patriotic lapel pins, I was nonetheless irked by such blissful ignorance.

O.K., so maybe I drink too much coffee and don’t get enough sleep. And maybe I should save my hostility for infuriatingly slow motorists driving cars way more expensive than mine. Or maybe – just maybe – it is my duty to educate the masses.

Let’s go with the latter. And just to make this fun, let’s pretend we’re on a television game show called “Who Wants To Be An IP Attorney?” Ready? (Que: music.) Begin!

Question No. 1:

What is a trademark?

A. A specific form of copyright protection that applies only to patents.

B. A word, symbol or devise intended to prevent consumer confusion with regard to the origin of goods or services sold.

C. This thing that’s growing on the side of my neck which looks oddly like Elvis Presley and may be worth something on Ebay.

The answer is B. Trademarks are intended to prevent mistake, deception and consumer confusion with regards to the origin of goods sold. See Time, Inc. v. Motor Publications, Inc., (4th Cir. (M.D.), Dec 15, 1955) 227 F.2d 954, 108 U.S.P.Q. 4. Before any infringement can be found, the plaintiff must typically establish that there is a likelihood of consumer confusion as to the product’s source – or origin – due to a similarity between the parties’ trademarks. E & J. Gallow Winery v. Gallo Cattle Co. (9th Cir. 1993) 967 F.2d 1280, 1290; see also 15 U.S.C. §§ 1114(a)(a), 1125(a)(1). This usually requires an application of a multi-factor test that looks at the strength of the plaintiff’s mark, the similarity of the marks at issue, the area of commerce in which the products at issue are sold, the sophistication of the potential buyers, evidence of actual confusion, and the likelihood that the defendant intends to expand into the plaintiff’s market. AMF Inc. v. Sleekcraft Boats, (9th Cir. 1979) 599 F.2d 341, 348-349.

Give yourself one point if you got the correct answer. Give yourself two points if you shouted out “DING, DING, DING!” when you got it right. If you chose answer C, put down this article and log onto to Ebay immediately.

Question No. 2:

True or false, trademark infringement occurs any time someone swipes your mark for use on their product or service.

A. Ooh ooh, a “true or false” question. I just love these! It’s the only time I have a 50/50 shot at being right about anything. I knew it was worth wasting time on this article. Ok, here goes: I’m going with true!

B. Oh, I hate these questions. Look at this, a 50% change of being wrong . . . again! Alright, fine, I’m going with false.

C. Wait a minute, before I answer, let me ask you this: If it’s called “pattern baldness” why doesn’t it come in paisley, check or gingham?

The answer is…. B! Trademark infringement requires the commercial use of the same or similar mark by another with respect to goods or services that is likely to cause confusion with respect to the actual or potential customers of the trademark owner’s goods or services. 15 U.S.C. § 1125
(a). The focus here is on the confusion of actual or potential customers, and not on whether the holders of competing marks are in fact competitors. Id.; see also Charles E. McKenney, Federal Unfair Competition: Lanham Act § 43(a), 2.04 (1993). An infringers product or service need only be sufficiently related to the trademark owner’s goods or services so that it is reasonably likely that both goods/services are sold or advertised to common costumers. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).

Just remember, a “likelihood of consumer confusion” is the hallmark of trademark infringement. This means, just because I have a company named “BigGass” that sells legume-based confectionary products (“designed to fill your tank”), and you have a company named “BigGass” that sells petroleum-based pantaloons to the super-sized crowd, there will be no finding of infringement unless there is a likelihood that a consumers would mistakenly believe that my candy company is the source of your haute couture. This is because trademarks are obtained for distinct classes of goods and services. United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918); see also 15 U.S.C. § 1052(d). Using this same example, clothes for fat people are not in the same class of goods as are candy bars. Although, wouldn’t it be ironic if they were?

One point if you got the answer right. Two points if you ran down the hall screaming “DING, DING, DING!” Three points if you’ll do it now.

Question No. 3:

What’s with that ®?

A. It means you’re claiming a trademark. Isn’t that what this insipid article is all about?

B. It’s stands for “Robin.” Those IP folk are such Batman fans.

C. It means that the trademark holder has obtained a federal registration in the mark.

The answer is C. Only those who have obtained a federal registration in their mark are entitled to use the ®. See Copelands’ Enterprises Inc. v. CNV, Inc., 945 F2d 1563 (Fed. Cir. 1991). Those who have not obtained a federal registration may claim a common law trademark, but are relegated to the ™ symbol. What’s the difference? Trademarks are geographic in nature. This means that if I use my BigGass mark exclusively in California, and do not obtain a federal registration in it, you can come along and use that same mark in the same class of goods or services for geographic regions where I am not using it. Like New York, Illinois, Arizona, Washington. Conversely, by obtaining a federal registration in my mark, I acquire a nationwide constructed usage of it. 15 U.S.C. § 1072. This means that even though I don’t sell in New York, Illinois, Arizona and Washington, I have the same rights there as if I did, and those rights date all the way back to the filing of my trademark application. Id.; Allard Enterprises, Inc. v. Advanced Programming Resources, Inc., 249 F3d 564 (6th Cir. 2001). Technically speaking, this means that I have a basis for asserting trademark infringement against subsequent users of the mark in my class.

Moreover, a federal registration is prima facie evidence of ownership. But use of the ® without a federal registration will defeat the applicant’s right to registration where “it is conclusively established that the misuse of the symbol was occasioned by an intent to deceive the purchasing public or others in the trade into believing that the mark was registered.” Copeland’s Enterprises, Inc. v. CNV, Inc. 945 App.2d 1563, 1566, (Fed.Cir. 1991). The last thing you want is to have a mark invalidated by a competitor because you jumped the gun and used ® prior to actually obtaining a federal registration.

If you got that answer right, give yourself a point. If you are willing to phone up your managing partner and scream “DING, DING, DING!” . . . it’s time to look for another job.

Question No. 4:

What is a “primary user” and a “secondary user?”

A. Drug talk.

B. The co-dependent relationship I had in college.

C. Given that this is a trademark article, I’m going to bet that it has something to do with trademarks.

The answer is A. Just kidding!! The answer is C. Primary mark holders are the first users of the trademark in any geographic location. Secondary users are … well, just as the name implies. Now you might think that a secondary mark user is automatically an infringer. Not so. Let’s go back to my common law trademark in “BigGass.” Sure, I’ve been selling my candy under that mark since the early ‘80’s, and you just entered the market with your own confusingly similar mark. While you are undisputedly the secondary user, you are still free to use the mark in those geographic regions where I have yet to venture. In that instance, you become the primary mark user in those locations, relegating me the secondary user (if I ever attempt to go there). Absent various exceptions, caveats and loop holes that we lawyers specialize in, the secondary user who uses the mark in the primary user’s geographic location will be subject to a trademark infringement suit. This is so even if the secondary user obtained a federal registration in the mark after the primary user began using it but before going into that territory. See National Association for Healthcare Communications, Inc. v. Central Arkansas Area Agency on Aging, Inc., 257 F3d. 732 (8th Cir. 2001).

If you got this answer wrong, take away all your points.

Question No. 5:

How long will my trademark last?

A. The life of the author plus 70 years.

B. Possibly forever.

C. The Rule Against Perpetuities.

The answer is B. Provided you comply with certain minimal renewal requirements, a trademark lasts as long as it is in continuous use. See 15 U.S.C. §§ 1127, 1058, 1065. Continuous use simply means that there has been no intent to abandon the mark, and the mark has not been out of use for three or more years. A failure to use the mark for three or more years constitutes prima facie evidence of abandonment, even without any intent to do so. 15 U.S.C. § 1127.

Give yourself a point regardless of your answer. I’m feeling benevolent, and my twelfth cup of coffee is just starting to kick in.

Question No. 6:

Which of the following is not a trademark?

A. The roar of the MGM lion.

B. The phrase “Just Do It.”

C. Kleenex.

The answer is … all three are trademarks, although it is questionable as to how much longer Kleenex can hold onto that right. (Stop complaining. I just gave you a free point.) In addition to abandonment, trademark protection may be lost where the mark becomes generic. In a way, this is penalty for becoming too popular. Kleenex provides a perfect example, as does Xerox. How many times have you asked someone to make you a Xerox, or for a Kleenex? Both marks have become colloquial for the products they represent: a Kleenex is a soft facial tissue, and a Xerox is a photocopy. Once a mark becomes so widely associated with the generic product itself that people start referring to all products of that type by the mark (i.e. photocopies as Xerox’s and facial tissues as Kleenex), the mark runs the risk of losing out to the common lexicon. See In re Dial-A-Mattress Operating Corp., 240 F.3d 1341 (Fed. Cir. 2001).

This is because the level of protection a mark provides – and its concomitant ability to serve as a mark at all – depends on where it falls on a continuum that ranges from “descriptive” to “suggestive” to “fanciful and arbitrary.”

What’s a descriptive mark? A name that describes the goods or service, such as “Tom the Plumber.” Japan Telecom, Inc. v. Japan Telecom America, Inc., 287 F.3d 866 (9th Cir. 2002). A suggestive mark leaves a little more to the imagination, e.g. “Fastpress” for basketball shoes. Id.

On the far end of the spectrum is fanciful and arbitrary marks. Think Kodak. What does that mean, “Kodak”? Well, nothing. It is merely a word that good Mr. Eastman created many years ago by taking the word Kodiak – as in the bear – and eliminating a letter to create the name of his new company. The more arbitrary and fanciful the mark, the stronger it is. The more the descriptive the mark, the weaker it becomes. Ironically, both Kleenex and Xerox started out fanciful, but because of their popularity have gone nearly to the other end of the spectrum. Who says popularity doesn’t have its price?

Give yourself a point if you can explain this: Why, if breakfast is the most important meal of the day, doesn’t it come with dessert? Give yourself two points if you’re in the dark about this like the rest of us.

Question No. 7:

What is the initial interest confusion doctrine?

A. It is how I feel after having read this article.

B. It relates to confusion the Patent and Trademark Office must feel when reviewing zillions of trademark applications from people with companies called BigGass.

C. It is a little known judicially created hangnail that exists under the trademark law.

The answer is C. The initial interest confusion doctrine looks at whether the defendant’s use of the plaintiff’s mark was done “in a manner calculated to capture initial consumer attention even though no actual sale is finely completed as a result of the confusion.” Dr. Seuss Entrs. v. Penguin Books (9th Cir. 1997) 109 F.3d 1394, 1405; Brookfield Communications, Inc. v. West Cost Entertainment Corp. (9th Cir. 1999) 174 F.3d 1036, 1061-66; See generally 15 U.S.C. §§ 1114, 1125.

Some people have criticized the initial interest confusion approach as a departure form the core principal of trademark law because if allows a finding of infringement where there is only a fleeting confusion that is dispelled before any purchase occurs. Others have observed that, because it relies on an amorphous standard that falls far short of a reasoned analysis, it has the potential of being used as a potent weapon for keeping legitimate competitors out of the market. For example, the doctrine has been used to curtail parodies, (See Dr. Seuss, supra.) criticism about the trademark owners, (OBH, Inc. v. Spotlight Magazine, Inc. (W.D.N. 4 2000) 86 F.Supp.2d 176; J.K. Harris & Co. v. Kassell (N.D. Cal. 2002) 2002 WL 1303124, rev’d (N.D. Cal.2003) 253 F.Supp.2d 1120)), directory information about used equipment dealers, (Caterpillar Inc. v. Telescan Techs, LLC ((C.D. Ill. 2002) 2000 U.S. Dist Lexis 3477; PACCAR Inc. v. Telescan Techs, LLC (6th Cir. 2003) 319 F.3d 246), and promotions by third party vendors of after-market servicing. See Promatek Indus. Ltd. v. Equitrac Corp. (7th Cir. 2002) 300 F.3d 808.

The basis upon which many courts have applied the initial interest confusion doctrine probably is better categorized as “unfair competition.” See Section 43 (a) of the Lanham Act (which permits an injured party to bring a federal unfair competition claim). In a nutshell, Section 43 (a) is designed to promote fairness and honesty in business dealings by prohibiting, among other things, the use of any false or misleading description of fact, designation of origin, or misrepresentation as to characteristic, quality, affiliation, association, or geographic origin. Id.

Examples of unfair competition include confusingly similar corporate, business and professional names, and the use of confusingly similar titles of literary works. It also includes “bate and switch” selling tactics.

Give yourself a point if you got the answer right. Give yourself two points if you will mercilessly lobby the 9th circuit to get rid of the initial interest confusion doctrine.

Question No. 8:

OK, I’ve listened to your rant, so tell me: Why can’t I patent the copyright in my trademark?

A. Because it would be too damn expensive.

B. Because every IP attorney I call hangs up on me.

C. Because patents, copyrights and trademarks are three different legal rights.

The answer is C, although just to add to your confusion, these distinct rights sometimes overlap.

A trademark, as we saw above, includes any word, name, symbol, device, or any combination thereof, used or intended to be used in commerce to identify and distinguish the goods of one manufacturer or seller from the goods manufactured or sold by others, or to otherwise identify the source of the goods. 15 U.S.C. §§ 1114, 1125. A copyright is a legal protection afforded to literary, artistic, musical and architectural works exhibiting a modicum of originality that are fixed in any tangible medium. 17 U.S.C. § 102(a). Patents come in several different forms, including design, utility and mechanical. Generally, the subject of a patent application must be sufficiently original, non-obvious and useful. See 35 U.S.C. § 100 et. seq. A patent affords the holder the right to exclude others from making, using, offering for sell, selling or importing into the United States the patented invention. Id. So don’t even try to copyright it.

Give yourself 10 points for reading this dribble. Give yourself another 10 points if you understood any of it. Give yourself 10 points if you are willing to hang up on the next client who calls with a silly question. Tally up your points, contestants. Game’s over.

Jonathan Pink is a partner at Bryan Cave, LPP. He heads the Intellectual Property and Technology Group in the Orange County office of that firm. He may be reached at jonathan.pink@bryancave.com

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

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