>> HOPE SHIMABUKU: Now without further ado, let me
introduce you to your next speaker, who is Miss Asha
Allan, and she is an intellectual property and
international trade litigation partner at the top-ranked Washington,DC boutique
Adducci, Mastraini & Schaumberg. And apologies, I hope I didn't mispronounce any of those.
Miss Allan helps companies address competition involving products imported into the
United States in a broad range of industries including medical and pharmaceutical products,
appliances and industry equipment and consumer products. She is originally from Houston, Texas
and received her bachelors degree from the University of Texas at Austin, before moving to
Washington, D.C. to attend the George Washington University law school. She considers herself a
Texas ex pat and is a frequent importer of
barbecue sauce and kolaches. Miss Allan, over to you.
>> ASHA ALLAM: Great. Today we are going to talk about, you have got your Trademark registered, how
do you protect and maintain it? Next slide, please.
First and foremost, I want to start with, it's important to know your USPTO references and
resources. If I were to spend the next 25 minutes listing all of the rules that apply once you have
a trademark registered and where to find them, you would be bored and so would I. In fact the PTO has
done a remarkable job of making resources available to the public on why you registered and
what you can do with a registered mark, how do you protect it and maintain it. I'm not going to walk
through all those resources because they are available to you for free.
Next slide, please. When you were thinking about protecting your Trademark, it's important to think
about protection with a view to litigation. We are going to talk about in this short amount of time
that we have, consumer products have high
import volumes and are increasing. The U.S. in April
alone of this year imported $63 billion in consumer goods. That is a increase over last year
of course, but in addition to that, the value and volume of e-commerce are increasing, just for the
first quarter of 2021 it was $215 billion in e-commerce.
The cost of slip ups for infringement or
other trademark claims can be expensive.
Now I've given you resources that the PTO offers and the reasons why you should protect your
Trademark, and also make a plug for section 337 litigation before the International Trade
Commission. You see a map on the right of all of the ports of entry into the United States where
products are coming into the country and being
sold on the U.S. market primarily or oftentimes when it
comes to consumer goods through e-commerce channels. You can imagine if you are a trademark
owner and you have goods coming through all those places, trying to shut down those ports of entry
for your products is like playing whack-a-mole. That is where the International Trade Commission
tackles it all. More on that later.
Next slide, please. While we are talking about protecting and maintaining your trademark, there
is really three actions that you should focus on. First,
maintaining your rights and that is through use
and renewal. Second is monitoring the market for your use of your rights and similar products,
similar goods, similar marks. Finally, enforcing your rights in order to exercise your right to
exclusivity so you don't lose it.
Next slide, please. First we are going to talk about maintaining your rights. Let's talk about
the basics. Thank you. You want to make sure that you are using your mark so it continues to be
protectable. That means making sure that you are qualifying continuous use, use within a state does
not count for federally registered trademarks. In addition,
making sure that you're using your mark as a source signifier
is really important. Non-public or internal uses like
invoices may not be enough to, is sufficient use
to maintain or protect your Trademark. You also want to make sure that you have
continuous use. You've got to mind the gap. There is no strict
definition of what continuous use looks like. Consider what is reasonable for your industry and
most importantly avoid sporadic use. If you are selling, if you are
in a industry where selling ten pieces of
equipment is normal, it might be enough to label the equipment with your brand or trademark. If you
are selling, on the other hand, thousands or millions of products and they are small volume
etcetera and are pervasive, may not be good enough if you are only labeling or only using your mark
on five or ten percent of those. You should keep track of that and be mindful of what qualifies as
continuous use.
Finally you want to make sure you are documenting your use,
not just because eventually you have to make your
renewal filing, but you want to bolster your position, if you are in a position where you need
to litigate. There are some examples there of the types of
documentation to keep track of, but once you
register your mark, that doesn't mean that from that point forward you should be documenting use.
You had to document use in order to register the mark. It's important to hold on to registration
documentation of use, because there may be times where you register your mark, come across
infringement but infringers use predates
registration but doesn't predate your common law rights. You have
your files organized so you can find what you need if 20 years down the line you have to reach back
to protect your brand. Next slide please.
Marking. Marking is really important, especially in the context of
maintaining your rights, because it dovetails with
use. While marking your good with your trademark is not required, it does help signal the source of
your goods and increases your association. It can improve the strength of your trademark as a source
identifier.
Next slide please. There are a number of USPTO filings
that are required in order to maintain your mark,
and these are easy to docket in the USPTO system, it does a good job of giving you reminders. I
won't go through all the requirements. But keep in mind that between year five and six is when you
have to file your declaration of use, and you can file an affidavit showing that your trademark is
eligible to be incontestable at the five year mark as well.
Next slide, please.
You also want to make sure you are monitoring the use of your mark in the market so
it continues to be protectable. Next slide, please. Here are problems to watch out for. You
lose protection if your mark is no longer a
signifier of source. Whether that is due to non-use
or loss of exclusivity, so two things in general that you want to watch out for is other people's
trademarks or whether they are registered or not, and others labeling or branding of similar goods
and services to those on which you are using your mark. Next slide, please. As I mentioned, you want
to watch for marks that are like yours. That is a spectrum, presented in a very oversimplified
illustration of the types of causes of actions
that are implicated in what I'll call the trademark space.
Trademarks are protectable because they signal source. There is more protection and relief
against uses of your mark that improperly interfere with that association.
As the association wanes, it is harder to obtain relief because the use is not source identifying.
But there are still causes of action to alleviate
unfairness associated with your mark. Sp you can see there,
as the association, as you move away from association with the source, there are fewer
causes of action that are more immediately available to you. As a litigator, I would be
remiss if I didn't talk through each of the causes
of action with you, so that is what we are going to do next. Next slide, please.
I know everybody is capable of reading these slides. I won't go through them in detail. I want
to save time for questions, and the plug that I mentioned at the beginning. But in practice
counterfeit means copy, infringement means confusion, that's an easy way to think of it.
There is more to it than that, you are
free to look at the statutes, but that is a good compass in terms of how to think about problems
you should spot when you look at the market. Next slide, please.
The reason trademark litigators have work is because
this is a spectrum. You have authentic goods, there are counterfeits that look identical to your
authentic goods and you have infringing goods which can vary from a little bit less than
identical to quite different as long as they are
confusing as to the source of goods. These are some
images from real Trademark infringement case that was brought at the International Trade Commission
to tackle 20 different companies that were the source of counterfeit or infringing product.
Next slide, please. Between counterfeiting and infringement, they are nearly the same elements to
prove but counterfeiting is a lot easier to prove because it's easy to look at something and see
whether it's identical. Likelihood of confusion is often presumed. Next slide, please. In terms of
the relief available to trademark owners in the case of counterfeiting or infringement, the relief
available against counterfeiting is more severe, because the egregiousness of the conduct is more
severe. You are recovering anything from lost profits to punitive damages, based on how
egregious the conduct is in the infringement or in the case of counterfeiting, the copying.
Next slide, please. Dilution is another cause of action available to you Trademark owners. However,
it's not as common as far as trademarks actions
go. It is a relatively recent addition to the Trademark body
of law coming up on its 26th anniversary this year, not 75th. It's not about the trademarks'
ability to identify source but rather the inherent value
in the Trademark itself. It is only available,
dilution as a claim is only available for famous
marks. What constitutes a famous mark is not really
defined, but it's clear that the mark has to be more ubiquitous than a well known mark. A
well known mark might be known to the
relevant consuming sector of the public where a famous mark is known to everybody
worldwide.
Dilution is really about stopping similar marks and can be remedied without having to show
confusion or product competition or even harm to the Trademark owner. Next slide, please.
Here are some examples of recent
dilution cases. Dilution by blurring is reducing the, making your trademark less distinct or unique
as a signifier of source. Rolex watch, sued Rolex help for diluting the distinctiveness of the
Rolex trademark by blurring the association
between the mark and the watches that Rolex is in the business of selling. More
recently than that, many of you may be familiar with the Nike
lawsuit against mischief for Lil'Nas X's sneakers that were
Nike sneakers that the mischief product studio
customized for Lil'Nas X. Nike sued for dilution by tarnishment of their reputation,
because what you are complaining of is that somebody's use of your mark is making your brand
look bad. Next slide, please.
Dilution is not easy to prove, especially when you are starting with what constitutes a famous
trademark. But the elements are easy and intuitive to understand. It is more difficult to establish
blurring, tarnishment is rather obvious. This is fortunately
one area of the law where Congress and the
trademark community has made the law fairly easy to understand and fairly intuitive. That is one
thing we can all benefit from. Next slide, please.
In terms of relief available for dilution, again because the primary purpose of the cause of action
is to stop the unfair act or unfair use, the primary relief is an injunction that the trademark
owner is entitled to if successful in proving elements of claim to dilution. So you're not
thinking about ebay factors in this case, you're entitled to the injunction. In order to get the
additional relief in the form of damages and costs or destruction of goods or materials
that produce goods that are being used to dilute a trademark, you have to show willfulness.
That means that you are either intending to trade on the
recognition of a famous mark in the case of blurring or that you have a willful intent to harm
the reputation of the famous mark for tarnishment. Next slide, please.
False and misleading representations, the Lanham Act provides section 1125A1 that is really
a catch all.
As we are talking about the 75th anniversary of
the Lanham Act, I think it's worth mentioning this is a cause of action that
often overlaps with trademark rights but is not really in itself a trademark claim in the
representations around a product. But it's definitely something that Trademark owners should
keep in mind when leveraging different causes of
action available to them. Next slide, please. I'm not going to read
this. I want to save some time. But elements to prove false or misleading representations are
fairly similar to infringement. Next slide, please.
One of the things that I want to point out is, while this is not directly a trademark claim,
there are a lot of areas where trademarks come up in making false representations, for example false
suggestions about endorsements. Often times for underwriters, for example, this comes up
where products aren't compliant with a standard or
a standard doesn't exist and a manufacturer might label products UL compliant, complying with UL
standard whatever. That is something to keep in mind when you are trying to articulate what might
be unfair and maybe it doesn't quite fit with
infringement or counterfeiting, maybe it doesn't fit with
dilution. It might still be something that can be addressed through litigation. Next slide, please.
Let's talk about enforcement. Enforcement is scalable. You don't have to jump into litigation.
But once you have your registered mark, you should
immediately start the easy step. Next slide, please. Marking is not
required but it is cheap and easy. You have to provide notice in order to get damages for
trademark infringement. It is a easy way to check that box. Next slide, please.
CBP recordation is also really important, most bigger
companies are doing this, but you can get U.S.
Customs and Border Protection to enforce your rights for you. They're already at the border,
they're already inspecting imports, and remember those increases in imports and
e-commerce we talked about earlier. Who do you think is in the best position to stop
them from coming into the country. CBP enforcement recordation of trademarks is limited often to
counterfeit goods. It doesn't really tackle infringement
to the full extent of the likelihood of confusion
standard. But it is a good start because
it is pretty inexpensive.
You also want to watch the Trademark gazette. We had
the live oral argument about the opposition, the
PTO is trying to prevent registration of similar marks, but lawyers would not have as much work if
there weren't disagreements about the definition
of similar. You should definitely monitor the gazette to make sure there
is nothing that might cause you damage if registered through likelihood of confusion or
dilution, or if the mark shouldn't be issued for other reasons.
Next slide, please.
Another important area to pursue enforcement is in the space
of on-line marketplaces. It's difficult to pin
down liability on third party use on the on-line marketplaces, unless you can show that the
products are infringing, bring it to their attention and they choose to ignore it. There is
some proposed legislation to change that. We will see
what happens. So for now as a trademark owner you
need to be scouring websites, I listed popular platforms, but scouring the Internet to make sure
if there are listings that infringe or violate somehow your trademark right, you are notifying
these companies. Some of them have sophisticated protocols for notifying them of infringement.
Large companies have entire teams dedicated to generating spreadsheets with hundreds or thousands
of links for listings, that as you can tell it's probably a very time consuming and tedious
process. If the violations are that pervasive, it
may be time to think about litigation. Next slide, please.
There are different forums of litigation that you can pursue. There are three different forums,
district court cases, International Trade Commission and the state court. The causes of
action are the same in all three categories of forum. The timing may differ. The main differences
between the forums are timing strategies, requirements and relief. Next, slide please.
My bias is probably pretty obvious, but the main differences
between the ITC and federal district courts in
terms of litigating trademark claims, trademark infringement claims in particular, is that in the
ITC you can sue anyone that is importing products or selling imported products without joinder
complications. You often have especially in the trademark context, these lawsuits that involve 20
or 30, 15 to 30 different defendants that are infringing a trademark, in different degrees of
infringement. Some may be counterfeit, some infringing. You can litigate all those claims in
one fell swoop. That is convenient but is also efficient from a cost perspective. It means you
need no more whack-a-mole in trying to shut down
infringement across the country. It also means your costs are
lower, you are running discovery and briefing claims against 20 infringers in a single suit.
Worth noting from procedural perspective, the ITC has six specialized judges that focus only on
unfair competition in IP
and they issue decisions typically in less than 18 months. District court litigation
averages about three years. I think it is shorter for trademark
claims because most are solved on summary
judgment. However, because of the ITC's expedited schedule,
you get to the summary judgement phase a lot faster, typically within
5-7 months. So when you think about the speed of relief and scope of relief, you are setting
yourself up for, it's a pretty attractive forum. Next slide, please. From a
substantive perspective there are some differences. You
have to prove so more elements. Did you think you would get the keys to the kingdom, the entire U.S.
market without proving you are worthy? You have to
prove the case involves imported goods because the ITC's jurisdiction is in rem, not in personam
and you also need to prove that you have a U.S. footprint and
are making productive use of your trademark to be
worthy of the powerful market exclusivity the ITC will enforce for
you. That means showing investments in facilities,
equipment, labor, research and development to bring products to market. It doesn't have to be
manufacturing but needs to be more than sales and advertising. The other big difference is in the
remedies. You don't have to satisfy the e-bay factors in order to get a injunction. Injunction
is automatic. But there is a general exclusion
order. Let's say you file suit, you name 15 infringers, but
you show that there are even more that you are having a hard time identifying. You will get
automatic injunction against the 15 you named in the lawsuit, but once you can show there is a
pattern of violation and it's hard for you to
identify the source of infringement, you can also get a
general exclusion order where the ITC tells customs, if you see any products from anybody,
whether they are part of this lawsuit or not, that looks similar to this, the entire universe of
accused products that the ITC adjudicated, customs will shut it down regardless of whether that party
had the ability to litigate in the ITC case. The
general exclusion order has been a really powerful remedy
for those low margin, low barrier to entry product markets like protective cases for cell phones,
converse sneakers, sharpie markers, etcetera. The last is cease and desist
order. Next slide, please. To summarize, ITC litigation is powerful, efficient
and quick. If you have any questions, feel free to reach out to me. My contact information is on the
next slide. I know the PTO is making contacts
available for questions. With that I am done, thank
you so much.
>> HOPE SHIMABUKU: Thank you so much, Asha, I appreciate everything you have shared with us
and for
that wonderful insight on how to enforce registrations after you have gotten your mark.
Thank you very much.