copyright, patent, trademark

iPscaling?

How did iPscaling come about? 

Years ago, I started by teaching live intellectual property training to startup entrepreneurs in person in small meeting rooms and classrooms all across the Tampa Bay region.?

My idea was to reach new startups before they made the common mistakes that I was seeing in my legal practice.??? Companies were being sued by larger competitors when they could least afford to defend a lawsuit. Business owners were putting the rights to iP in their own name, instead of the company name, or worse… neglecting to own the rights entirely … with all the problems and costs that you might be able to imagine. If you don’t own the iP, then somebody else does.

These classes were very effective for groups of 10 – 20 business owners, but hour-long classes would stretch into two hours with questions.

Then, I did the math. About 400,000 new businesses register with the Secretary of State’s office in Florida every year. I would have to give 20,000 classes a year just to reach all of the new business owners filing LLC and corporate registrations in Florida. But wait. That would mean 20,000 classes on copyright, plus and equal number on trademarks, plus an equal number on trade secrets… Well, you get the picture, right? I needed to find a way to scale… I had to listen to my own advice.

So, I started experimenting with technology as a way of reaching more business owners. It wasn’t easy. Back when I started, the technology for interactive teaching didn’t exist or was super clunky. Also, the idea was to reach business owners BEFORE they made mistakes, but passive videos on Youtube don’t work. There’s no accountability. No follow through. Busy business owners need encouragement to not only learn what they should do but also to get it done right.

Most business owners wanted me to do it for them, but overhead of a law firm is high. Many business owners either went without or had to save up money to pay even my firm’s reasonable flat fees, which add up fast. It also meant that I would never achieve my goal, because my firm can’t represent hundreds of thousands of clients. There are only 140 Florida Bar certified intellectual property attorneys in my state, last time I checked. Many of those are litigators and only represent clients AFTER the damage is done.

So, I started online training, the IP Workshop, which eventually was rebranded as iPmasterclass. What I realized is that business owners failed to grasp a fundamental concept, which was holding them back. Intellectual Property includes trademarks, copyrights, trade secrets and patents, but intellectual property does not add value to a business. It’s a cost to a business. What does add value?

Intangibles.

Intangibles are the things you can’t see and can’t touch that intellectual property protects. It’s the good will in your brand, the value created from creative works that are exclusively yours, the competitive advantage from keeping your know-how, processes and specialized knowledge secret, the ability to prevent others without a license from using or selling your inventions, and much much more…

If you’re not understanding this right now, you’re not alone. I went back and forth with one very bright client to way to long trying to explain the difference between “good will” in a brand and the brand/trademark itself. Legally and financially they are two different concepts. A trademark assignment must transfer both the trademark and the associated good will. Otherwise, the assignment is invalid.

It’s things like this that can drive clients crazy.

Then, I had a thought. What if I could make it easy to understand the difference between “intangible” property or “iP” and intellectual property or IP? It took me awhile to find the right metaphor: the Concertina principle. But this took root, and business owners understood. It’s the iP that gives a business its competitive advantages, building value in the business. The IP merely helps to own and protect it, which allows the owner to grow its value without undue fear of loss. This idea gave birth to the “own protect grow” 3-step process, and iP scaling or “iPscaling” was born.

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trademark

Why Distinctiveness?

Every brand starts out at zero. It’s not worth anything until customers start to associate your brand with your company in their brains. Getting those synapses to fire in the right way when your customer hears your brand name is called “good will” by intellectual property attorneys and accountants.

If you’re building brand value, then you’ll want to make sure that your customers can remember your brand. You need at least two things for that. The brand should be “sticky”, meaning memorable for some reason, and it should be distinctive, meaning its not easily confused with somebody else’s brand. I think of SPANX as an example of a brand that is both sticky and distinctive.

If your brand is sticky but not distinctive, you’re always going to have difficulty with confusion about whether the product or service is offered by you or that other similar brand. And this confusion can lead to long and expensive trademark lawsuits, when one of the two brands gets serious about defending its trademarks. I’m thinking of all the moose litigation initiated by Moosehead Breweries as an example of attempting to defend a sticky, but not particularly distinctive, brand for beer.

So, pick a brand that’s distinctive. It’s much easier to make a distinctive brand sticky than it is to make a sticky brand distinctive. But we’ll save that for another post.

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trademark

Am I allowed to refer to a trademarked product when selling another product?

A nondeceptive, descriptive use of a brand name is a “fair use” of a trademark in some cases. Now, this doesn’t mean you won’t be sued, if a particular trademark owner is aggressive with trademark lawsuits. So, be careful to make sure that your use is the type that is undeniably fair…

So, what type of use might that be?

  • Your use of the mark must use the mark to describe a person, place or attribute of goods or services.
  • The mark must be used in the ordinary course of your language; and in the ordinary text portion of your use, rather than in a banner or as a label.
  • Don’t set the mark apart from your other text in any way.
  • Don’t use the logo or colors associated with the mark as used by the owner of the trademark.
  • If you are using the brand name for comparison or descriptively as the original source of goods being resold, make sure that the comparison or description is provably truthful and in no way deceptive.

For this last point, if any comparisons or use to identify original origin are to be made, make sure that you are absolutely correct, that any pictures of the product used are your copyrighted work or are licensed by you, and any comparison should be factual and objectively verifiable. For example, if any testing was done to compare one product to another, then it should be done by an independent, qualified testing service. Comparisons that are ambiguous or subjective should be avoided if a brand name is used in connection with the comparison.

In the U.S., courts have found disclaimers helpful in reducing possible confusion in connection with repackaged goods, resales, preowned sales, comparative advertising and criticism. Care must be taken in a disclaimer to avoid introducing confusion or not helping to reduce it. So, any disclaimer should be prominent and clear in its purpose to avoid confusion. Prominent means both close in proximity to the use of the mark and as close to equally visibility between the mark and the disclaimer, as possible.

The language of the disclaimer makes a difference too. Don’t play games with this. The disclaimer should clearly state that there is no connection between the company or brand selling the goods or providing services and the original source of the goods. Words like “…no affiliation, license or relationship with…” the owner of the mark, without any equivocation.

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trademark, Uncategorized

Trademark Disputes

Can I use a word the same or similar to a famous mark in my advertising copy?

What about an apparently abandoned mark? Is that available?

Will I get sued if…?

Can I get a trademark for…? 

I see questions like these often in my practice, at parties and on social media.

Hi, I’m Chris Paradies, a registered patent attorney and Florida Bar certified intellectual property attorney, and I’m going to answer all of the confusion surrounding trademark registration and lawsuits.

I’m not going to get into “fair use”, much, which is a defense to trademark infringement. While I would like to include this, it would just make this training too long. And in most cases, you just don’t want to be relying on a fair use defense.

So, let’s look at trademarks.

There are some common misunderstandings that make it hard to talk about trademarks. But most of these will be addressed as we discuss this topic. Just agree to keep an open mind, and forget what you think you already know about trademark disputes.

First, always remember, the point of owning a trademark or service mark is to identify your company as the source of particular goods or services. If you start here, and remember this, it makes everything else easier. 

Why?

You’d like to have as distinctive a mark as possible. So, you’re not likely to be delving deep into the unanswerable questions. Instead, you’re looking for a distinctive mark that your customers will readily identify with your brand and ONLY your brand.

The point of distinctiveness is not to see how close you can come to someone else’s mark. You’re not looking for how close you can come to being likely to confuse consumers…

With this in mind, the very difficult likelihood of confusion scenarios become: “Is there any possibility of confusion?” That question is usually much easier to answer. 

What do I mean by “likelihood of confusion”? 

That’s the analysis used in court to determine if an owner of a mark can stop a third party from using or registering the same mark or a similar mark. The factors used in this analysis are sometimes referred to as Dupont factors, because lawyers like to refer to the name of a litigant from an appellate case that is cited by other lawyers in the courts.    

  1. Are you using the “word” as a mark, to identify your goods and services, or are you using the word descriptively?
  2. If you’re using the word as a mark, are you using it to identify you or your company as the source of any similar goods or services?
  3. Are you serving the same customers?
  4. Are you using the same channels of commerce?
  5. How many other companies are using the “word” or something similar as a mark and in what types of goods or services?
  6. Is the “word” used in combination with design elements in the logo, as part of the logo?
  7. Who used the “word” first as a trademark or service mark?

Once you answer all of these questions, then you should consult with a trademark or “intellectual property” attorney in your state or country.

If your company is a corporation or limited liability company, you won’t be able to sue without an attorney.

If the “word” is registered as part of a design as a logo by a third party, and you are using it in commerce as a mark to identify your company as the source of goods or services, after the filing date of the application for registration, then be thankful that you have not already been sued.

If you’re using it to identify the brand of goods or services that you are reselling, then you have to look at “fair use” to determine if your use of the third party’s mark is a permitted use.

And remember that there is little upside for you to bring a lawsuit against a third party to continue using any particular word, descriptively, if there are lots of other words that you can use to describe your goods or services.

With all that said, if you want to sue in the U.S., you have the right. I would advise against bringing a lawsuit against a trademark owner unless you have at least a few hundred thousand dollars you would like to blow. But I am sure there are attorneys out there that could use your money better than you.

So what are the “Dupont factors”? 

It all comes down to whether your trademarks and trade dress are distinctive or are likely to cause confusion among likely consumers of your product or service. The more distinctive your mark is from other marks, the less likely that any of the factors considered in the case referred to as Dupont will be relevant to your situation.

  1. Relatedness. How related are the goods that are being sold? The more related; the more likely that confusion ensues.
  2. Similarity. How similar are the marks? The more similar; the more likely confusion ensues. It could be any type of similarity, whether in appearance or in sound (as spoken) or in meaning or in commercial impression or in any other way.
  3. Channels. Are the channels of commerce that are likely to continue similar? A channel of commerce is how your product or service is discovered and distributed. Some examples are retail, direct sales, distributors…, if the channels are the same; the more likely that confusion ensues.
  4. Conditions. Under what conditions do consumers make a decision to purchase your product? The more likely the purchase is an impulse purchase; the more likely that confusion ensues.
  5. Fame. How famous is the prior mark? The more famous the mark; the more likely that confusion ensues.
  6. Number. How many other brands are using similar marks on related goods? The fewer brands using similar marks on similar goods; the more likely that confusion ensues.
  7. Actual. Is there actual confusion. The more actual confusion among actual relevant consumers; the more likely confusion ensues.
  8. Concurrent. Have the marks been used concurrently for an extended time without actual confusion? The shorter the period that similar marks have been used on similar goods without actual confusion; the more likely actual confusion.
  9. Variety. How many goods is the senior brand (i.e. the earlier brand use of the mark) being used on? The more goods; the more likely that confusion ensues.
  10. Consent. Has the senior brand consented to the particular use made by the junior mark? A consent agreement may be entered into by two parties that provides for concurrent use of similar marks. This may be relevant to a confusion analysis, especially if the agreement sets out limitations on the uses made of the mark by the parties. Alternatively, consent may be given without any agreement, if the senior party new or should have known of the junior party’s use. Legally, this implied consent is called laches or estoppel, depending on the facts. The less deliberate and obvious the attempts to avoid confusion; the more likely confusion ensues, regardless of consent.  
  11. Exclude. The right to exclude others from using its mark is considered. A federal registration gives a user the right to exclude others, but a “common law” use of mark, without registration, doesn’t give rise to the right to exclude, necessarily. The stronger the right to exclude; the more likely confusion ensues. 
  12. Extent. What is the extent of any possible confusion? The greater the extent of possible confusion; the more likely confusion ensues.

These factors are not exclusive. Anything else that is relevant to the use and giving rise to confusion should be considered

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trademark

Trademark Filing Change

The US Patent & Trademark Office announced that it will delay the effective date of its mandatory electronic filing rule change from December 21, 2019 to February 15, 2020.

Under this change, trademark applicants and registrants will be required to file their trademark applications and documents concerning trademark applications and registrations online using the USPTO’s Trademark Electronic Application System (TEAS). 

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trademark

What does “merely descriptive” mean?

A trademark or service mark is stronger and easier to protect if it is inherently distinctive, such as KODAK or XEROX.

However, most marketing folks gravitate toward more descriptive marks that are not inherently distinctive and, therefore, more difficult to register and protect. Some are “merely descriptive” and can’t serve as a trademark.

PURE APPLE for applesauce made from 100% apples would be merely descriptive of the product and could not serve as a trademark.

Oftentimes, the issue in a federal application for registration of a mark is not as black and white.

What happens when the trademark office refuses an application for descriptiveness? There are several options.

First, the mark may be abandoned and a more distinctive mark selected.

Second, evidence may be presented that the mark is suggestive but not merely descriptive. For example, the mark as a whole may have other connotations in customers’ minds than merely describing some aspect of the product or service.

Third, the Applicant may elect to publish the mark on the supplemental register, which sacrifices some of the benefits of a federal regisration:

  • no nationwide constructive notice of the registrant’s ownership;
  • no priority of use nationwide of the registered mark effective from the filing date of the federal application; and
  • no evidentiary presumptions in Federal Courts.

However, the supplemental registration is not an admission of descriptiveness, and Applicant may elect to apply for registration on the principal register with proof of distinctiveness (ordinarily relying on a presumption after five years of continuous use).

Fourth, if the mark has already been used and acquired distinctiveness, then evidence of acquired distinctiveness may be provided to overcome the refusal.

Fifth, Applicant may appeal the refusal to the Trademark Trial and Appeal Board, which is the most expensive and time consuming option. (It’s often not successful, either.)

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trademark

Am I allowed to refer to a trademarked product when selling another product?

Yes, but be careful.

Having the right does not mean that you won’t be sued in America.

This particular right is described in the Lanham Act as a type of fair use.

The factors for “nominative” fair use are as follows.

  • a product or service must not be readily identifiable without use of the mark,
  • The user only uses so much of the mark as is necessary.
  • The user does not do anything to imply sponsorship or endorsement

In fact, it would be useful to provide a prominent disclaimer such as:

“All trademarks both marked and unmarked belong to their respective companies, and use of a trademark nominatively to refer to a particular product or service does not imply sponsorship or endorsement.”

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