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>> HOPE SHIMABUKU: Now without further ado, let me 

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introduce you to your next 
speaker, who is Miss Asha

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Allan, and she is an intellectual property and  

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international trade litigation partner 
at the top-ranked Washington,DC boutique  

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Adducci, Mastraini & Schaumberg. And apologies,
I hope I didn't mispronounce any of those.  

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Miss Allan helps companies address
competition involving products imported into the

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United States in a broad range of industries
including medical and pharmaceutical products,

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appliances and industry equipment and consumer
products. She is originally from Houston, Texas

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and received her bachelors degree from the
University of Texas at Austin, before moving to

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Washington, D.C. to attend the George Washington
University law school. She considers herself a

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Texas ex pat and is a frequent importer of 

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barbecue sauce and kolaches. 
Miss Allan, over to you.

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>> ASHA ALLAM: Great. Today we are going to talk
about, you have got your Trademark registered, how

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do you protect and maintain it? Next slide,
please.

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First and foremost, I want to start with, it's
important to know your USPTO references and

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resources. If I were to spend the next 25 minutes
listing all of the rules that apply once you have

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a trademark registered and where to find them, you
would be bored and so would I. In fact the PTO has

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done a remarkable job of making resources
available to the public on why you registered and

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what you can do with a registered mark, how do you
protect it and maintain it. I'm not going to walk

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through all those resources because they are
available to you for free.

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Next slide, please. When you were thinking about
protecting your Trademark, it's important to think

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about protection with a view to litigation. We are
going to talk about in this short amount of time

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that we have, consumer products have high 

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import volumes and are 
increasing. The U.S. in April

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alone of this year imported $63 billion in
consumer goods. That is a increase over last year

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of course, but in addition to that, the value and
volume of e-commerce are increasing, just for the

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first quarter of 2021 it was 
$215 billion in e-commerce.  

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The cost of slip ups for infringement or

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other trademark claims can be expensive.

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Now I've given you resources that the PTO offers
and the reasons why you should protect your

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Trademark, and also make a plug for section 337
litigation before the International Trade

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Commission. You see a map on the right of all of
the ports of entry into the United States where

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products are coming into the country and being 

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sold on the U.S. market 
primarily or oftentimes when it

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comes to consumer goods through e-commerce
channels. You can imagine if you are a trademark

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owner and you have goods coming through all those
places, trying to shut down those ports of entry

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for your products is like playing whack-a-mole.
That is where the International Trade Commission

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tackles it all. More on that later.

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Next slide, please. While we are talking about
protecting and maintaining your trademark, there

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is really three actions that 
you should focus on. First, 

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maintaining your rights and that is through use

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and renewal. Second is monitoring the market for
your use of your rights and similar products,

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similar goods, similar marks. Finally, enforcing
your rights in order to exercise your right to

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exclusivity so you don't lose it.

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Next slide, please. First we are going to talk
about maintaining your rights. Let's talk about

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the basics. Thank you. You want to make sure that
you are using your mark so it continues to be

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protectable. That means making sure that you are
qualifying continuous use, use within a state does

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not count for federally registered 
trademarks. In addition, 

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making sure that you're using 
your mark as a source signifier

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is really important. Non-public 
or internal uses like 

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invoices may not be enough to, is sufficient use

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to maintain or protect your Trademark. 
You also want to make sure that you have 

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continuous use. You've got to 
mind the gap. There is no strict

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definition of what continuous use looks like.
Consider what is reasonable for your industry and

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most importantly avoid sporadic 
use. If you are selling, if you are 

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in a industry where selling ten pieces of

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equipment is normal, it might be enough to label
the equipment with your brand or trademark. If you

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are selling, on the other hand, thousands or
millions of products and they are small volume

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etcetera and are pervasive, may not be good enough
if you are only labeling or only using your mark

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on five or ten percent of those. You should keep
track of that and be mindful of what qualifies as

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continuous use.

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Finally you want to make sure 
you are documenting your use, 

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not just because eventually you have to make your

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renewal filing, but you want to bolster your
position, if you are in a position where you need

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to litigate. There are some 
examples there of the types of 

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documentation to keep track of, but once you

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register your mark, that doesn't mean that from
that point forward you should be documenting use.

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You had to document use in order to register the
mark. It's important to hold on to registration

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documentation of use, because there may be times
where you register your mark, come across

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infringement but infringers use predates 

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registration but doesn't predate 
your common law rights. You have

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your files organized so you can find what you need
if 20 years down the line you have to reach back

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to protect your brand. Next slide please.

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Marking. Marking is really important, 
especially in the context of 

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maintaining your rights, because it dovetails with

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use. While marking your good with your trademark
is not required, it does help signal the source of

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your goods and increases your association. It can
improve the strength of your trademark as a source

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identifier.

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Next slide please. There are 
a number of USPTO filings 

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that are required in order to maintain your mark,

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and these are easy to docket in the USPTO system,
it does a good job of giving you reminders. I

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won't go through all the requirements. But keep in
mind that between year five and six is when you

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have to file your declaration of use, and you can
file an affidavit showing that your trademark is

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eligible to be incontestable at the five year mark
as well.

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Next slide, please.  

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You also want to make sure you are
monitoring the use of your mark in the market so

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it continues to be protectable. Next slide,
please. Here are problems to watch out for. You

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lose protection if your mark is no longer a 

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signifier of source. Whether 
that is due to non-use

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or loss of exclusivity, so two things in general
that you want to watch out for is other people's

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trademarks or whether they are registered or not,
and others labeling or branding of similar goods

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and services to those on which you are using your
mark. Next slide, please. As I mentioned, you want

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to watch for marks that are like yours. That is a
spectrum, presented in a very oversimplified

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illustration of the types of causes of actions 

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that are implicated in what 
I'll call the trademark space.

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Trademarks are protectable because they signal
source. There is more protection and relief

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against uses of your mark that improperly
interfere with that association.

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As the association wanes, it is harder to obtain
relief because the use is not source identifying.

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But there are still causes of action to alleviate 

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unfairness associated with your 
mark. Sp you can see there,

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as the association, as you move away from
association with the source, there are fewer

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causes of action that are more immediately
available to you. As a litigator, I would be

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remiss if I didn't talk through each of the causes 

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of action with you, so that is what we 
are going to do next. Next slide, please.

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I know everybody is capable of reading these
slides. I won't go through them in detail. I want

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to save time for questions, and the plug that I
mentioned at the beginning. But in practice

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counterfeit means copy, infringement means
confusion, that's an easy way to think of it.  

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There is more to it than that, you are

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free to look at the statutes, but that is a good
compass in terms of how to think about problems

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you should spot when you look at 
the market. Next slide, please.  

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The
reason trademark litigators have work is because

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this is a spectrum. You have authentic goods,
there are counterfeits that look identical to your

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authentic goods and you have infringing goods
which can vary from a little bit less than

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identical to quite different as long as they are 

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confusing as to the source 
of goods. These are some

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images from real Trademark infringement case that
was brought at the International Trade Commission

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to tackle 20 different companies that were the
source of counterfeit or infringing product.

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00:10:05,040 --> 00:10:12,480
Next slide, please. Between counterfeiting and
infringement, they are nearly the same elements to

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00:10:12,480 --> 00:10:18,640
prove but counterfeiting is a lot easier to prove
because it's easy to look at something and see

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whether it's identical. Likelihood of confusion is
often presumed. Next slide, please. In terms of

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the relief available to trademark owners in the
case of counterfeiting or infringement, the relief

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available against counterfeiting is more severe,
because the egregiousness of the conduct is more

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severe. You are recovering anything from lost
profits to punitive damages, based on how

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egregious the conduct is in the infringement or in
the case of counterfeiting, the copying.

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00:11:02,720 --> 00:11:09,440
Next slide, please. Dilution is another cause of
action available to you Trademark owners. However,

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it's not as common as far as trademarks actions 

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00:11:11,760 --> 00:11:14,720
go. It is a relatively recent 
addition to the Trademark body

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of law coming up on its 26th anniversary this
year, not 75th. It's not about the trademarks'

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ability to identify source 
but rather the inherent value 

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in the Trademark itself. It is only available,

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dilution as a claim is only available for famous 

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marks. What constitutes a 
famous mark is not really

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defined, but it's clear that the mark has
to be more ubiquitous than a well known mark. A

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00:11:41,600 --> 00:11:43,520
well known mark might be known to the 

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relevant consuming sector of the public 
where a famous mark is known to everybody

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worldwide.  

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00:11:52,160 --> 00:11:57,680
Dilution is really about stopping similar
marks and can be remedied without having to show

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00:11:57,680 --> 00:12:04,160
confusion or product competition or even harm to
the Trademark owner. Next slide, please.  

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00:12:06,800 --> 00:12:08,960
Here are some examples of recent

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00:12:09,760 --> 00:12:18,640
dilution cases. Dilution by blurring is reducing
the, making your trademark less distinct or unique

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as a signifier of source. Rolex watch, sued Rolex
help for diluting the distinctiveness of the

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Rolex trademark by blurring the association  

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00:12:28,880 --> 00:12:34,320
between the mark and the watches that 
Rolex is in the business of selling. More 

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00:12:34,320 --> 00:12:39,120
recently than that, many of you 
may be familiar with the Nike

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00:12:40,160 --> 00:12:45,920
lawsuit against mischief for 
Lil'Nas X's sneakers that were 

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Nike sneakers that the mischief product studio

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customized for Lil'Nas X. Nike sued for
dilution by tarnishment of their reputation,

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because what you are complaining of is that
somebody's use of your mark is making your brand

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00:13:04,880 --> 00:13:07,520
look bad. Next slide, please.

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00:13:09,920 --> 00:13:14,720
Dilution is not easy to prove, especially when you
are starting with what constitutes a famous

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trademark. But the elements are easy and intuitive
to understand. It is more difficult to establish

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blurring, tarnishment is rather 
obvious. This is fortunately 

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one area of the law where Congress and the

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trademark community has made the law fairly easy
to understand and fairly intuitive. That is one

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00:13:36,480 --> 00:13:40,800
thing we can all benefit from. Next slide, please.

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00:13:42,800 --> 00:13:48,240
In terms of relief available for dilution, again 
because the primary purpose of the cause of action  

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is to stop the unfair act or unfair use, the 
primary relief is an injunction that the trademark  

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owner is entitled to if successful in proving
elements of claim to dilution. So you're not  

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00:14:03,280 --> 00:14:08,640
thinking about ebay factors in this case, you're 
entitled to the injunction. In order to get the

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00:14:08,640 --> 00:14:14,880
additional relief in the form of damages and costs
or destruction of goods or materials

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00:14:14,880 --> 00:14:19,120
that produce goods that are being used to dilute 
a trademark, you have to show willfulness. 

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00:14:20,880 --> 00:14:25,440
That means that you are either 
intending to trade on the

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recognition of a famous mark in the case of
blurring or that you have a willful intent to harm

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00:14:30,000 --> 00:14:34,800
the reputation of the famous mark 
for tarnishment. Next slide, please.

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00:14:37,760 --> 00:14:45,600
False and misleading representations, the Lanham
Act provides section 1125A1 that is really  

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00:14:45,600 --> 00:14:46,240
a catch all.

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00:14:47,840 --> 00:14:49,840
As we are talking about the 75th anniversary of 

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00:14:49,840 --> 00:14:54,240
the Lanham Act, I think it's worth 
mentioning this is a cause of action that

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often overlaps with trademark rights but is not
really in itself a trademark claim in the

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representations around a product. But it's
definitely something that Trademark owners should

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keep in mind when leveraging different causes of 

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00:15:11,440 --> 00:15:16,400
action available to them. Next 
slide, please. I'm not going to read

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this. I want to save some time. But elements to
prove false or misleading representations are

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fairly similar to infringement. 
Next slide, please.

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One of the things that I want to point out is,
while this is not directly a trademark claim,

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there are a lot of areas where trademarks come up
in making false representations, for example false

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suggestions about endorsements. Often times 
for underwriters, for example, this comes up 

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where products aren't compliant with a standard or

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a standard doesn't exist and a manufacturer might
label products UL compliant, complying with UL

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standard whatever. That is something to keep in
mind when you are trying to articulate what might

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00:16:02,400 --> 00:16:04,880
be unfair and maybe it doesn't quite fit with 

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00:16:04,880 --> 00:16:06,720
infringement or counterfeiting, 
maybe it doesn't fit with

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00:16:06,720 --> 00:16:14,160
dilution. It might still be something that can be
addressed through litigation. Next slide, please.

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Let's talk about enforcement. Enforcement is
scalable. You don't have to jump into litigation.

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00:16:22,560 --> 00:16:24,720
But once you have your registered mark, you should 

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00:16:24,720 --> 00:16:30,960
immediately start the easy step. 
Next slide, please. Marking is not

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00:16:30,960 --> 00:16:36,240
required but it is cheap and easy. You have to
provide notice in order to get damages for

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00:16:36,240 --> 00:16:39,840
trademark infringement. It is a easy way to check
that box. Next slide, please.

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00:16:41,600 --> 00:16:44,800
CBP recordation is also 
really important, most bigger 

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00:16:44,800 --> 00:16:47,280
companies are doing this, but you can get U.S.

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00:16:47,280 --> 00:16:51,360
Customs and Border Protection to enforce your
rights for you. They're already at the border,  

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they're already inspecting imports, and 
remember those increases in imports and  

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00:16:54,640 --> 00:16:58,560
e-commerce we talked about earlier. Who do 
you think is in the best position to stop

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00:16:58,560 --> 00:17:06,400
them from coming into the country. CBP enforcement
recordation of trademarks is limited often to

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00:17:06,400 --> 00:17:09,520
counterfeit goods. It doesn't 
really tackle infringement 

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00:17:09,520 --> 00:17:11,920
to the full extent of the likelihood of confusion

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00:17:11,920 --> 00:17:14,240
standard. But it is a good start because  

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00:17:15,040 --> 00:17:16,400
it is pretty
inexpensive.

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00:17:19,440 --> 00:17:22,560
You also want to watch the 
Trademark gazette. We had 

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00:17:23,600 --> 00:17:27,040
the live oral argument about the opposition, the

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00:17:27,040 --> 00:17:32,320
PTO is trying to prevent registration of similar
marks, but lawyers would not have as much work if

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00:17:32,880 --> 00:17:34,560
there weren't disagreements about the definition 

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00:17:34,560 --> 00:17:39,093
of similar. You should definitely 
monitor the gazette to make sure there

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00:17:39,093 --> 00:17:45,040
is nothing that might cause you damage if
registered through likelihood of confusion or

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00:17:45,040 --> 00:17:50,880
dilution, or if the mark shouldn't be issued for
other reasons.

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00:17:52,080 --> 00:17:52,960
Next slide, please.

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00:17:54,400 --> 00:17:57,600
Another important area to pursue 
enforcement is in the space 

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00:17:57,600 --> 00:18:00,320
of on-line marketplaces. It's difficult to pin

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down liability on third party use on the on-line
marketplaces, unless you can show that the

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products are infringing, bring it to their
attention and they choose to ignore it. There is

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some proposed legislation 
to change that. We will see 

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what happens. So for now as a trademark owner you

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need to be scouring websites, I listed popular
platforms, but scouring the Internet to make sure

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if there are listings that infringe or violate
somehow your trademark right, you are notifying

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these companies. Some of them have sophisticated
protocols for notifying them of infringement.

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Large companies have entire teams dedicated to
generating spreadsheets with hundreds or thousands

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of links for listings, that as you can tell it's
probably a very time consuming and tedious

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process. If the violations are that pervasive, it 

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may be time to think about 
litigation. Next slide, please.

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There are different forums of litigation that you
can pursue. There are three different forums,

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district court cases, International Trade
Commission and the state court. The causes of

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action are the same in all three categories of
forum. The timing may differ. The main differences

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between the forums are timing strategies,
requirements and relief. Next, slide please.

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My bias is probably pretty 
obvious, but the main differences 

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between the ITC and federal district courts in

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terms of litigating trademark claims, trademark
infringement claims in particular, is that in the

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ITC you can sue anyone that is importing products
or selling imported products without joinder

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complications. You often have especially in the
trademark context, these lawsuits that involve 20

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or 30, 15 to 30 different defendants that are
infringing a trademark, in different degrees of

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infringement. Some may be counterfeit, some
infringing. You can litigate all those claims in

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one fell swoop. That is convenient but is also
efficient from a cost perspective. It means you

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need no more whack-a-mole in trying to shut down 

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infringement across the country. 
It also means your costs are

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lower, you are running discovery and briefing
claims against 20 infringers in a single suit.

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Worth noting from procedural perspective, the ITC
has six specialized judges that focus only on

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unfair competition in IP  

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and they issue decisions typically
in less than 18 months. District court litigation

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averages about three years. I 
think it is shorter for trademark 

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claims because most are solved on summary

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judgment. However, because of 
the ITC's expedited schedule,  

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you get to the summary judgement 
phase a lot faster, typically within  

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5-7 months. So when you think about the speed
of relief and scope of relief, you are setting

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yourself up for, it's a pretty attractive 
forum. Next slide, please. From a 

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substantive perspective there 
are some differences. You

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have to prove so more elements. Did you think you
would get the keys to the kingdom, the entire U.S.

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market without proving you are worthy? You have to 

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prove the case involves imported goods because 
the ITC's jurisdiction is in rem, not in personam

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and you also need to prove that 
you have a U.S. footprint and 

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are making productive use of your trademark to be

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worthy of the powerful market 
exclusivity the ITC will enforce for 

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you. That means showing investments in facilities,

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equipment, labor, research and development to
bring products to market. It doesn't have to be

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manufacturing but needs to be more than sales and
advertising. The other big difference is in the

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remedies. You don't have to satisfy the e-bay
factors in order to get a injunction. Injunction

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is automatic. But there is a general exclusion 

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order. Let's say you file suit, 
you name 15 infringers, but

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you show that there are even more that you are
having a hard time identifying. You will get

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automatic injunction against the 15 you named in
the lawsuit, but once you can show there is a

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pattern of violation and it's hard for you to 

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identify the source of 
infringement, you can also get a

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general exclusion order where the ITC tells
customs, if you see any products from anybody,

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whether they are part of this lawsuit or not, that
looks similar to this, the entire universe of

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accused products that the ITC adjudicated, customs
will shut it down regardless of whether that party

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had the ability to litigate in the ITC case. The 

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00:22:32,800 --> 00:22:36,160
general exclusion order has 
been a really powerful remedy

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for those low margin, low barrier to entry product
markets like protective cases for cell phones,

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converse sneakers, sharpie markers, 
etcetera. The last is cease and desist 

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order. Next slide, please. To summarize, 
ITC litigation is powerful, efficient

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and quick. If you have any questions, feel free to
reach out to me. My contact information is on the

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next slide. I know the PTO is making contacts 

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available for questions. 
With that I am done, thank

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you so much.

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>> HOPE SHIMABUKU: Thank you so much, Asha, I
appreciate everything you have shared with us  

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and for

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that wonderful insight on how to enforce
registrations after you have gotten your mark.

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Thank you very much.