Website Accessibility: Is Your Website ADA Compliant?

Legal activists for the disabled are filing an increasing number of successful website accessibility challenges. Among the companies sued: Hobby Lobby, eBay, Blick Art Materials, Five Guys, Target, Winn-Dixie, etc. Very soon, it may be the law that commercial websites must be compliant with the Americans With Disabilities Act (“ADA”).

Background: The Case Of Gil v. Winn Dixie Stores, Inc.

In June 2017, a federal judge in Florida conducted what is believed to be the first-ever trial and first-ever victory for a plaintiff concerning the accessibility of a commercial website under the ADA. See news report here.  Gil v. Winn-Dixie Stores, Inc., No. 16-23020-Civ-Scola (S.D. Fla. 2017).

The plaintiff sued Winn-Dixie Stores, Inc. (“Winn-Dixie”) for violation of the ADA. Winn-Dixie is a regional grocery store chain. Mr. Gil alleged that the store’s website, www.winndixie.com, is inaccessible to the visually impaired, including himself. After a two-day trial, the judge ruled in favor of Mr. Gil. The judge ruled that an injunction should issue requiring Winn-Dixie’s website to become ADA compliant. The judge further required that Winn-Dixie set aside $250,000 to update the website and also awarded attorneys’ fees and costs. No money damages are available under Title III of the ADA. Specific additional rulings on the injunction and the amount of attorneys’ fees are pending.

Is a Website a “Place of Public Accommodation” for Purposes of the ADA?

In general, the ADA prohibits the owner of a “place of public accommodation” from discriminating on the basis of handicap or disability. 42 U.S.C. § 12182(a). There is no question that Winn-Dixie’s physical stores are “places of public accommodation” for purposes of the ADA. However, what about the website? The website does not physically exist anywhere, or at least anywhere to which human beings can travel.

So, then the question becomes whether the ADA limits a “place of public accommodation” to a physical space. So far, the courts have split on this question. The debate is whether “services” are covered and whether “services” require a “physical space.” The recent trend is to say “yes, websites are covered by the ADA” for commercial retailers with so-called brick and mortar stores.

Some History: Insurance Policies and the ADA

Cases involving insurance policies were among the first types to address the question of the ADA and intangible goods, services, and non-physical spaces. For example, in Parker v. Metropolitan Life Ins. Co., 121 F. 3d 1006 (6th Circuit 1997), the plaintiff sued because her disability insurance policies provided more benefits for physical disability than for mental disability. During her employment, she became disabled due to severe depression. She sued for violation of Title III of the ADA related to public accommodations. The trial court granted summary judgment against the plaintiff on the grounds that Title III only covers discrimination in the physical access to goods and services.

The Sixth Circuit affirmed saying::

“While we agree that an insurance office is a public accommodation as expressly set forth in § 12181(7), plaintiff did not seek the goods and services of an insurance office. Rather, Parker accessed a benefit plan provided by her private employer and issued by MetLife. A benefit plan offered by an employer is not a good offered by a place of public accommodation. As is evident by § 12187(7), a public accommodation is a physical place …”

See also Stoutenborough v. National Football League, Inc., 59 F.3d 580 (6th Cir. 1995) (ADA Title III did not apply to live NFL football broadcast; such did not exist in a physical place).

The Third Circuit concurred. Ford v. Schering-Plough Corp., 145 F.3d 601 (3d Cir.1998) (same as Parker).

The Ninth Circuit concurred. Weyer v. Twentieth Century Fox Film Corp., 198 F. 3d 1104 (9th Cir. 2000) (same as Parker).

The First Circuit, however, disagreed. In Carparts Distribution Center, Inc. v. Automotive Wholesaler’s Association of New England, Inc., 37 F.3d 12 (1st Cir. 1994), the health benefit plan offered by the employer contained a $25,000 cap on benefits for AIDS related illnesses while the plan provided $1,000,000 in coverage for any other illness. The plaintiff brought suit under various theories including violation of Title III of the ADA. The First Circuit held that since “services” were clearly contemplated by Title III, Title III applies to insurance policies. The court parsed 42 U.S.C. § 12181(7)(F) in particular and noted that the list includes a “travel service,” a “shoe repair service,” an “office of an accountant, or lawyer,” an “insurance office,” a “professional office of a healthcare provider,” and other “service establishments.” According to the court, the plain meaning of those terms does not require a “public accommodations” to have physical structures for persons to enter.

Websites and ADA Compliance: The Developing Rule

As can be seen by the above discussion, the law is unsettled and it continues to be so with respect to website accessibility. That being said, there is a rule that seems to be developing which is this:

Where a website is heavily integrated with physical store locations and operates as a gateway to the physical store locations, the website is a service of a public accommodation and is covered by the ADA.

This is the holding of the Winn-Dixie case discussed above. Because the Winn-Dixie website was integrated into the marketing for the physical stores, the judge considered the website a “service” related to a physical place. Therefore, the court held that Title III of the ADA applied to the website.

For similar results, see Nat’l Fed’n of the Blind v. Target Corp., 452 F. Supp. 2d 946 (N.D. Cal. 2006) (“… to the extent that plaintiffs allege that the inaccessibility of Target.com impedes the full and equal enjoyment of goods and services offered in Target stores, the plaintiffs state a claim …” under Title III of the ADA).

By contrast, see Earll v. Ebay, Inc., 599 Fed. App’x. 695 (9th Cir. 2015) (“Because eBay’s services are not connected to any “actual, physical place[],” eBay is not subject to the ADA.”)

Some federal judges are going further and holding that there is NO requirement for a nexus to a physical store.  See Andrews v. Blick Art Materials, LLC, No. 17-CV-767 (US Dist. E.D.N.Y. 2017) (holding Title III of the ADA applicable regardless of nexus to physical stores; “A rigid adherence to a physical nexus requirement leaves potholes of discrimination in what would otherwise be a smooth road to integration.”); and Markett v. Five Guys Enterprises LLC, 1:17-cv-00788-KBF (US Dist. S.D.N.Y. 2017) (Mem. Order Denying Def. Mot. To Dismiss) (“[T]he text and purposes of the ADA, as well as the breadth of federal appellate decisions, suggest that defendant’s website is covered under the ADA .. as its own place of public accommodation …”).

As we wrote recently, there are very few businesses that can function without a web presence.  Almost every business uses its website to drive traffic to its physical stores. As such, web accessibility is going to become an increasingly important issue, and not just for the visually impaired, either. 

Contact Revision Legal

Call or write Revision Legal today. We can be reached by using the form on this page or by calling us at 855-473-8474.

 

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How Coexistence Agreements Work

In trademark law, coexistence agreements are contracts whereby two trademark owners agree to use their similar marks, but agree to limitations. For example, the two owners might agree that their respective goods or services will be offered in different geographic areas. A consent agreement is a type of a coexistence agreement that is usually shorter and is used mainly by trademark applicants as part of the documents needed to obtain registration. Sometimes the USPTO Examiner raises the possibility of “confusingly similar.” If the applicant can obtain a consent agreement, that will be considered evidence that there is no likelihood of confusion.

Coexistent Agreements are Contracts

A coexistent agreement is a contract and, as such, it must satisfy the legal requirements for a contract – offer, acceptance, consideration, meeting of the minds, performance, etc. Given the nature of trademarks and registration proceedings, coexistence agreements are written.

The purpose of the coexistence agreement is to set out the agreement of the disputing trademark owners about use of the marks. Most often, the coexistence agreement will limit the use of the similar marks to certain geographical territories or to certain types of good or products. Among the more famous examples is the coexistence agreement concerning California raisins. Back in the early 1910s, a dispute arose among California raisin growers over the trademarks “Sun-Maid” and “Sun-Kist.” In 1917, the respective parties settled their litigation by entering into a coexistence agreement. Under the terms of that contract, it was agreed that the California Associated Raisin Company would only use the trademark “Sun-Maid” on raisins and food products containing raisins. Otherwise, both “Sun-Kist” and “Sun-Maid” were off limits.

As time passed, the California Associated Raisin Company changed its name to Sun-Maid Raisin Growers. That company filed for bankruptcy and it (and the “Sun-Maid” trademark) gained new ownership. In the 1930s, the new owners learned of the coexistence agreement and wanted out from under it. The new owners said that they were a bona fide purchaser without knowledge of the coexistence agreement and that such was only binding on the previous parties to the agreement.

However, the Ninth Circuit said “no.” See case here. The court said the Sun-Maid Raisin Growers did not have a full-blown trademark. What they had was a trademark that was expressly limited. The court went on to say that the Sun-Maid Raisin Growers “… could not convey any right to the use of a trademark that it did not own, and that right had been expressly limited by the agreement of March 10, 1917, wherein the parties had agreed to limit the use of that trademark to raisins and raisin products.”

Consequently, the new owners had purchased through the bankruptcy proceeding only a trademark for use on raisin products.

So, as can be seen, trademarks are a type of property akin to land and that coexistence agreements “follow the trademark” even if the trademark is sold or assigned to a new owner.

As can also be seen, trademark coexistence agreements will be enforced by the courts. See also Am. Eagle Outfitters v. Lyle & Scott Ltd., 584 F.3d 575 (3d Cir. 2009) (holding that the parties’ agreement to consent to the registration of each other’s eagle marks was a binding contract); Waukesha Hygeia Mineral Springs Co. v. Hygeia Sparkling Distilled Water Co., 63 F. 438 (7th Cir. 1894) (enforcing an agreement that “fixes and defines the existing trademark of each” party — one to the “Hygeia” mark in connection with distilled water, and the other in connection with natural mineral or spring water).

Like other contracts, trademark coexistence agreements are transferable and/or assignable. Russell Road Food and Beverage, LLC v. Spencer, 829 F. 3d 1152 (9th Cir. 2016) (rights under coexistence agreement to “Crazy Horse” mark were transferable and enforceable).

Coexistence Agreements Must be Carefully Drafted

The main purpose of a coexistence agreement is to establish the rights and expectations as between the two competing trademark owners, but there is also the purpose of avoiding confusion among consumers. A trademark only works if it becomes associated in the minds of the consumers with your product.

Thus, a coexistence agreement must be crafted to avoid likelihood of confusion between the two similar trademarks. This can be done in several ways. For example:

  • Limiting use each mark to distinct geographical areas
  • Limiting use to certain trade channels (e.g., only online, via catalog, etc.)
  • Limiting use to certain holidays or times of the year
  • Limiting use to certain products (e.g., raisins and food containing raisins)
  • Limiting the methods of displaying the marks

As noted above, coexistence agreements are often presented to the USPTO as part of the registration application or in response to a concern raised by an Examiner. If the coexistence agreement is not well drafted, then the Examiner will reject the agreement and potentially reject the trademark application. An example is the trademark application discussed in In re Bay State Brewing Company, Inc., Serial No. 85826258 (February 25, 2016). At issue was the application to register TIME TRAVELER BLONDE for “beer.” The Examining Attorney raised a “likelihood of confusion” question because of a previous mark registered for TIME TRAVELER for “beer, ale and lager.” A consent agreement was reached and submitted to the Examiner with the expectation that the consent agreement would pave the way for registration. However, the Examiner rejected the consent agreement. Among other problems, the geographic limitations were not “real” limitations since each mark owner could use their mark in the other’s territory. As such, the consent agreement would not solve the “likelihood of confusion” problem.

Aside from limiting use of the competing marks to minimize likelihood of confusion, there are other issues that should be addressed in a coexistence agreement to avoid conflicts and litigation down the road. Among issues to resolve:

  • What is the length of the term of the coexistence agreement?
  • Which party has expansion rights (to new products or new territories)?
  • What about domain name(s) and/or use on social media?
  • Which party has the right to use variations of the mark?
  • What about rights to license or assign the respective marks?
  • What about international business use and filing for international trademarks?
  • What if one party abandons its mark? How is abandonment defined? What happens to the abandoned mark?
  • What are remedies for breach?
  • What is the venue for dispute resolution?

Coexistence agreements can be an effective manner to resolve trademark disputes when there is little risk of customer confusion or a negative impact on either side’s intellectual property. The problem is that the cards are almost all in one party’s hands.

Contact Revision Legal Today

Revision Legal is a full-service IP law firm providing legal services related to trademarks, patents, copyrights, trade secrets and all types of litigation. We can be reached by using the form on this page or by calling us at 855-473-8474.

 

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Do I Need To Trademark Under State Law?

Many are familiar with trademark registration under federal law. Some may not know that trademark registration is also available under state laws. In general, registering a trademark under state law is unnecessary, but there are some circumstances in which state trademark registration has value – when federal registration is not allowed and when your trademark might not be famous enough for protection under the anti-dilution provisions of federal law.

Why is State Trademark Registration Mostly Unnecessary? The Story of Burger King

The main reason why trademark registration under state law is generally unnecessary is that state registration does not give you priority in the whole state and state registration does not have priority.

The case of Burger King of Florida, Inc. v. Gene Hoots and Betty Hoots, D/b/a Burger King, 403 F.2d 904 (7th Cir. 1968) is a famous example. The plaintiff was the now-very-famous Burger King that is a national chain of fast food restaurants. The national chain began operating in Florida in 1953. As the court tells us, the national Burger King expanded quickly, with 15 restaurants by 1955 operating in Florida, Georgia, and Tennessee; another 14 restaurants within the next year in Alabama, Kentucky, and Virginia; another nine restaurants opened in the next year. In 1961, the national chain opened its first Illinois Burger King restaurant in Skokie. In 1961, the national chain registered the trademark “Burger King” under the Lanham Act. By 1967, the national chain operated more than 50 restaurants in Illinois.

By contrast, Gene and Betty Hoots operated only one Burger King restaurant that they opened 1957 in Mattoon, Illinois. They registered their trademark to the name “Burger King” in 1959 under Illinois law without knowledge of the national “Burger King’s” prior use of the same mark in Florida and the southeast.

Initially, the Hootses sued in state court for infringement of their state trademark. The national chain sued in federal court for infringement of their federal trademark. In the end, the federal court held that the federal trademark took priority over the state trademark. As such, the Hootses were prevented from using the “Burger King” mark outside of Mattoon, Illinois.

However, the Lanham Act, 15 U.S. Code § 1115 (b) (5), provides a so-called “limited area defense” to infringement if the users of the “junior mark” (like the Hootses) were continually using a mark in a local area, without knowledge of the “senior mark.” Because of this provision, the federal court ruled that the Hootses could continue to use the name “Burger King” for their local restaurant and that the national chain could not open one of their “Burger King” stores within a 20-mile radius. As reported a few years ago, that remains the status quo in Mattoon, Illinois.

As can be seen, having a trademark registered under Illinois law did not provide much protection against a litigant holding a trademark under federal law.

State Law Trademark Registration Where Federal Registration is Not Allowed

That being said, there are a couple of circumstances where state trademarks are needed. The first involves situations where federal registration is not allowed. At the moment, the most well-known example involves the cannabis industry. Recreational use of marijuana is fully legal in eight states and the District of Columbia. Those states:

  • Alaska
  • California
  • Colorado
  • Maine
  • Massachusetts
  • Nevada
  • Oregon
  • Washington

However, because recreational use of marijuana is prohibited by federal law, federal trademark registration cannot be obtained under the Lanham Act. This is the “unlawful use doctrine” under which the USPTO will deny registration for trademarks sought in connection with unlawful sale of products or services.

Under these circumstances, registration of a trademark under state law is essential. Thus, marijuana growers and retailers would be wise to have an aggressive registration plan to obtain registration under all of the state regimes where marijuana use is legal in some manner.

Growers and retailers would also be wise to use their marks in cross-state sales and distribution. And to be creative. As most know, a “trademark” is a word, phrase, symbol, design, or combination thereof, which identifies and distinguishes your goods/products (or services) from other goods/products. Do not forget that trademarks cover scents, the shape of a product’s packaging, and short musical “phrases” or unique sounds.

Dilution of Trademark Under State Law

There is a second reason why having a trademark under state law might be useful – dilution of trademark claims involving only locally or regionally famous marks. Under the Lanham Act, the owner of a trademark can sue for dilution. To do this, a plaintiff must show that the plaintiff’s trademark is famous and that the defendant’s use of the same mark (or a confusingly similar mark) causes a likelihood of dilution by blurring or tarnishing.

Note that under the Lanham Act, the senior mark must be “famous;” that is, “famous” nationally.

However, not all trademarks will be “famous” nationally and, as such, they will not support a dilution claim under the Lanham Act. A recent example is AEGIS Software, Inc., d/b/a San Diego Spirits Festival v. 22nd District Agricultural Ass’n, Case No. 15cv2956 BTM (BLM) (U.S. Dist. S.D. Cal. 2017). In that case, the court held that the “San Diego Spirits Festival” (“SDSF”) was not a “famous” mark as that term is used by the Lanham Act. The SDSF was/is a relatively new yearly festival in San Diego which offers specialty cocktails and liquors to the attendees. A competing festival called “Distilled: San Diego Spirit & Cocktail Festival” was started and SDSF sued under many theories including trademark dilution. However, since the plaintiff’s mark was not famous, the federal dilution claim was dismissed.

If your trademark is not “famous” nationally, then state trademark statutes can be used to protect your mark from dilution. A good example is Wedgewood Homes Inc v. Lund, 659 P.2d 377 (Ore. 1983). In that case, under the Oregon trademark statute, a home builder had used the mark “Wedgwood” for 25 years and it had become locally “famous.” The home builder successfully sued retirement apartment complexes for using the names “Wedgwood Downs” and “Wedgwood Place” which were not built or associated in any way with the homebuilder.  See also Florida International Univ. v. Florida National Univ., 830 F. 3d 1242 (11th Cir. 2016) (discussing “famous” in Florida under the Florida trademark statute; holding “FIU” was “famous” but that no confusion or dilution existed by defendant’s use of “FNU”).

Contact Revision Legal Today.

Whether you need to register your trademark under state law is a complex question. You need legal advice from the experienced trademark attorneys at Revision Legal.  

Revision Legal is a full-service IP law firm providing legal services related to trademarks, patents, copyrights, trade secrets and all types of litigation. We can be reached by using the form on this page or by calling us at 855-473-8474.

 

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Stronger Patents Act: 5 Significant Proposed Changes to Inter Partes Reviews

Recently, Senator Christopher Coons (D-Del) introduced the STRONGER Patents Act of 2017. So far, this is the only legislation introduced in this Congress addressing any sort of patent reform. The proposal would significantly change inter partes review proceedings before the Patent and Trademark Appeal Board (“PTAB”).

What is an Inter Partes Review?

An inter partes review (“IPR”) is a third-party administrative proceeding filed with United States Patent and Trademark Office (“USPTO”) that challenges whether a patent should have been granted. An IPR can be filed any any person, is only for patents that have already been granted (that is, not for patents that are pending) and can be filed to challenge any existing US patent. In general, IPRs are allowable nine months after a patent is granted. There is a related procedure called a post-grant review (“PGR”) that applies before the nine months expires.

IPRs (and PGRs) are reviewed by the PTAB. The PTAB was created in 2012 by the America Invents Act (“AIA”).

What is the Procedure?

In brief, the procedure is this: A patent-challenger files a petition and pays a fee ($9,000 as of 2015 to start an IPR). The petition must identify all parties in interest and identify, with particularity, each claim challenged, the grounds on which the challenge is based, and the evidence that supports the grounds for the challenge. See 35 U.S. Code § 312.

Thereafter, the patent-holder files a written response and submits documentary counter-evidence. Some mechanisms exist for amending claims and settling with the challenger. If those efforts fail, eventually, the amassed piles of paper are read and reviewed by the PTAB and its staff and a decision is rendered on the validity of the various claims that have been challenged. Appeals, if any, are then taken directly to the Circuit Court of Appeals for the Federal Circuit.

What is Being Proposed by the STRONGER Patents Act?

Five of the most significant proposed changes are discussed below.

1. Limiting Who Can Bring an IPR

Under the AIA, any person or entity (other than the patent-holder) can file an IPR. Coupled with the reduced evidentiary burdens discussed below, by allowing any third-party to file challenge petitions, the AIA encouraged political and social activists to become involved in patent validity issues.

The proposed STRONGER Patents Act of 2017 would eliminate such activity. Under the proposed law, IPR (and PGR) petitions could be filed only by persons/entities that have been sued by the patent holder or by those who have been charged with infringement. According to Senator Coons, this would limit IPR/PGR standing to those parties with a financial or business interest in the patent.

2. Changing Claim Construction: Same for PTAB and District Courts

The PTAB has for years used its own standard for claim construction, the so-called “broadest reasonable construction” standard. The federal courts, however, use a narrower standard of claim construction that gives claims their “ordinary meaning as understood by a person of skill in the art” pursuant to 35 U.S.C. Section 282(b). The US Supreme Court recently upheld the PTAB use of its own standard. See Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016).

Claim construction is used at several points in the patent process:

At the beginning to determine patentability by comparing the new claim to prior art,

During infringement cases to determine if some other device or process is infringing, and

In proceeding to challenge patent validity.

Patents are almost always complex and require a detailed understanding of the nature of the process or device, the properties of materials, how raw materials interact, how various methods produce certain results, etc. Claim construction involves looking at the patent/proposed patent and then construing the claim(s) made to give them definition/scope. That definition/scope is then used at the various stages to make a comparison with prior art and/or an alleged infringement.

How the claim is constructed makes a huge difference in the outcome. A broad claim creates a very broad target for potential invalidity (e.g., §102 lack of novelty or §103 obviousness).

Sen. Coons’ STRONGER Patents Act would require the PTAB to abandon the “broadest reasonable construction” standard for IPRs/PGRs and use the claim construction standard used by the district courts.

3. Raising the Burden of Proof and Adding a Presumption of Validity

Under 35 USC § 282(a), in a federal district court proceeding, there is a statutory presumption that a challenged patent is valid. Legal presumptions establish which party is required to prove some fact or another. Having to prove something is more difficult than having to defend. Where a presumption of validity exists, the patent-challenger must prove invalidity, which is difficult for the patent-challenger. In the absence of the presumption, the patent-holder must prove validity, which is difficult for the patent-holder.

For an IPR proceeding, that presumption of validity does not exist. Thus, a patent-challenger has an easier task in an IPR proceeding.

Furthermore, in the district court, showing the invalidity of a patent requires proof that is “clear and convincing.” In most civil litigation, the standard of proof used is “preponderance of the evidence.” For decades, lawyers have been telling juries and judges that “preponderance of the evidence” is like a scale, just a little bit up is “preponderance”, like winning 51% to 49%. The criminal law standard is “beyond a reasonable doubt”; maybe like winning 90% to 10%. “Clear and convincing evidence” is somewhere in the middle; maybe like winning 66.6% to 33.4%.

In IPR proceedings, the standard of proof is preponderance of the evidence. 35 U.S. Code § 316 (e). Again, a patent-challenger has an easier task in an IPR proceeding.

The STRONGER Patent Act of 2017 would change both of these. Under the proposed law, a presumption of validity would be imposed and the patent-challenger would have the burden of proving unpatentability “by clear and convincing” evidence.

4. Allowing Immediate Court Review of Decision to Allow an IPR

Currently, under 35 U.S. Code § 314(d), the Patent Office has the “final and nonappealable” decision to allow an IPR petition to move forward. The IPR is to allowed if the petition shows “a reasonable likelihood that” the challenger “would prevail.” § 314(a). This nonappealability was affirmed by the US Supreme Court in the Cuozzo Speed Technologies case mentioned above.

The proposed legislation keeps the “reasonable likelihood of success” standard, but would permit immediate interlocutory appeal to the Federal Circuit if an IPR is allowed (no appeal if the IPR is denied). In addition, the new law would clarify that the USPTO adjudicators who decide to permit an IPR/PGR are distinct from the PTAB judges who will decide the outcome of a petition.

5. Allowing Only One IPR per Claim

Sen. Coons’ STRONGER Patents Act would disallow any new petition on any claim if an IPR (or PGR) petition has already been instituted concerning that claim. Limitations would also be imposed if the validity of a claim has been litigated in federal court.

Other Changes

The STRONGER Patents Act would also change the definition of “real party in interest” to include any person making a financial contribution to a challenge, whether directly or through an affiliate. Because parties in interest must be disclosed, this change would identify more clearly the special interest groups or businesses that are seeking the IPR. There are also proposed new rules for estoppel and for what happens when competing cases are pending in federal court and before the PTAB.

Beyond the realm of IPRs and PGRs, the bill would make changes concerning induced infringement and would make it much easier for patent-holders to obtain injunctions in patent litigation. 

We are doubtful that the STRONGER Patents Act of 2017 will become law, certainly not in its present form. However, as with all pertinent proposed statutory changes, we will watch with interest.

Contact Revision Legal

Revision Legal has skilled teams of lawyers and staff that can help with trade secrets, copyrights, patents and all types of litigation. We can be reached by using the form on this page or by calling us at 855-473-8474. We look forward to helping you with all of your IP legal needs.

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Red Wings Vs. Right Wings: Copyright Tarnishment and Other Lessons

We wrote recently about our outrage at white nationalists modifying and using the Detroit Red Wing’s famous “winged wheel” logo. Our outrage continues and we take a closer look at the potential lawsuit that might be in order. This is also a timely way to consider some other lessons such as no-assets defendants and so-called phantom infringers.

Who are the Defendants and are They Judgment-Proof?

One of the most frustrating aspects of protecting your trademarks (and other intellectual property) is locating the defendants. Here, the infringers are a small group of men who call themselves the “Right Wings.” But, as far as we can tell, there is no organization, corporation, or association to sue. So, who are the named defendants in the lawsuit?

The “who” also matters for pre-lawsuit efforts to defend intellectual property (IP). To whom (and to what addresses) are we sending cease and desist letters?

In this case, we might be able to track down the names of the individuals who were photographed carrying “their” false and fraudulent logo. Facial- and image-recognition software is now commonplace. Given the prevalence of uploading selfies to social-media, it is more probable than not that these men can be identified, each and every one.

This, then, leads to another issue and lesson – possible judgment-proof defendants. It is unlikely that these men, even collectively, have sufficient monetary and other assets to properly recompense the Detroit Red Wings for the damage to their trademark. But — and this is very importantly to the Red Wings — litigation can obtain injunctive relief very quickly.

Outside of this particular context, “phantom infringers” and judgment-proof infringers raise large and important practical issues when trying to defend your trademark (and other IP). For example, how does a business identify an infringer that might be located in one or more foreign countries manufacturing knock-offs and copycat merchandise selling primarily on the internet? This type of infringer often uses a business model premised on the idea of hiding manufacturing location(s) and using shifting and layered domain and trade names. Assets are also purposely funneled away from the manufacturing entities to prevent attachment by creditors. These types of businesses are designed to avoid trademark laws, being tough to locate pre-litigation, tough to serve as defendants, and tough to collect against after the lawsuit is successfully completed.

Trademark Infringement vs. Dilution Claims

As we hinted in our earlier call for the Red Wings to litigate this case to judgment, this might be a better case of trademark dilution rather than trademark infringement.

To make out a claim for trademark infringement, a plaintiff such as the Red Wings must show that the defendant’s use of the plaintiff’s mark (or a confusingly similar mark) causes a likelihood of consumer confusion. As we discussed here, the courts use several factors to evaluate the “likelihood of confusion.” Among the factors:

  • Similarity between the marks
  • Similar trade uses (e.g., apparel, food/beverages, etc.)
  • Strength of the senior mark (length of use, recognizability, etc.)
  • Similar geographic use
  • Actual confusion among customers
  • Customer sophistication
  • Intent/bad faith of alleged infringer

Many of these factors weigh in favor of a quick legal victory for our beloved Red Wings. The competing mark is nearly the same, the senior mark is strong and famous and, likely, there is evidence of intent/bad faith. However, the other factors are more problematic. First, it is unclear if the infringing logo is being “used in commerce.” For example, there is no indication of use of the infringing mark on t-shirts or ballcaps or other merchandise. Second, the trade and geographic uses are different. Third, and probably most importantly, while the offending mark clearly creates customer outrage, it probably does not create customer confusion.

The case for trademark dilution is much stronger. To sue for trademark dilution, a plaintiff must show that the plaintiff’s trademark is famous and that the defendant’s use of the same mark (or a confusingly similar mark) causes a likelihood of dilution by blurring or tarnishing the senior mark. Blurring weakens the distinctiveness of the senior mark raising the possibility, as the courts have said, that the mark will lose its ability to serve as a unique identifier of the trademark holder’s product or service.

Tarnishment harms the reputation of a trademark by linking, in the minds of the consumers, the famous mark with something unpleasant. In tarnishment cases, these are the elements of the claim:

  • The plaintiff owns a famous mark that is distinctive;
  • The defendant is using a mark in commerce that is the same or similar to the famous mark;
  • That the similarity between the famous and the diluting mark gives rise to an association that is likely to harm the reputation of the famous mark.

See Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). Courts have found tarnishment when a mark is placed in the context of sexual activity, obscenity, or illegal activity. Tarnishment most often arises where a trademark is linked to products of shoddy quality.

A cause of action for trademark dilution can be brought “regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” 15 U.S.C. § 1125(c)(1).

Normally, an injunction against further use of the infringing mark is the only remedy. However, if this was a publicity stunt, that might be evidence of willful misuse. In cases willful trademark dilution, available damages are the same as for infringement cases including monetary damages, possible statutory damages, and possible attorneys’ fees.

Contact Revision Legal

Managing and protecting your trademarks is complex and multifaceted. To do it right, you need skilled trademark attorneys like those at Revision Legal. We can help with evaluations, audits, applications, renewal, monitoring, warning letters to those who are infringing and all other aspects of protecting your trademarks. Contact the lawyers at Revision Legal. We can be reached by using the form on this page or by calling us at 855-473-8474. We look forward to working with you.

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More Details on Matal v. Tam: Are Other Parts of The Lanham Act at Risk?

As we recently discussed here, in June, the US Supreme Court declared the disparagement clause of the Lanham Act unconstitutional as a violation of the free speech clause of the First Amendment. In general, the disparagement clause prohibited registration of trademarks that might disparage a person, groups, or institutions. Matal v. Tam, 582 U.S., 137 S.Ct. 1744 (2017).

At issue was the proposed trademark application for THE SLANTS,  which is the name of a dance-rock band composed of four American musicians of Asian ancestry. The lead singer is Simon Tam. Their music has been compared to pop bands such as Depeche Mode. The term “slants” is, of course, a derogatory reference to Asians. Their application for trademark registration was denied for violating the disparagement clause.

The Slants appealed the denial and, as the case gained notoriety, they used the litigation as a marketing tool. For example, they issued a 2017 album called “The Band Who Must Not Be Named” and uploaded a short 0:57 second youtube video addressed to the Supreme Court to promote their summer 2017 tour.

What Happens Now?

After a ruling in his favor by the Supreme Court, Tam’s trademark application has been approved and published on August 9, 2017. As we discussed here, trademark registration is a multi-step process. Disparagement issues can derail an application at several points in the process, most often during the examination phase but also during the 30-day opposition period, which begins when an application is published.

Tam also terminated the long-running legal battles involving the Redskins, the Washington, DC professional football team. The fight to force the team to change its name became a hot political issue leading up to the 2016 presidential campaign. The legal battle with the NFL franchise actually dates back to the early 1990s, but it was not until 2014 that native American plaintiffs were successful in challenging the trademark registration. The Trademark and Trial Appeal Board revoked the trademark registration in Blackhorse v. Pro-Football, Inc., 111 U.S.P.Q.2d 1080 (T.T.A.B. 2014).

The TTAB’s decision was affirmed by US District Judge, Gerald Lee.  See Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439 (E.D. Vir. 2015). Judge Lee considered the First Amendment issues, but rejected those challenges. He drew a distinction between speaking and obtaining a federal trademark registration. In his view, trademarks and the associated private speech exist separate and apart from whether the speech/trademarks are federally registered.

Judge Lee’s decision was appealed to the Fourth Circuit. Tam now obviates the lower court ruling and makes the appeal moot.

Are Other Grounds for Denial at Risk?

In the Lanham Act itself, the disparagement clause sits alongside clauses that might now be of doubtful constitutionality. The statute reads, in pertinent part: “No trademark … shall be refused registration on the principal register on account of its nature unless it— (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute … “

An interesting question now arises about whether free speech challenges can succeed if trademarks are denied on the grounds of morality or scandalousness.

Tam and Copyright Registration

There has been some debate over the years about whether copyright registration should be denied on the basis of content (obscenity, for example). In general, copyright registration is considered “content-neutral.” Tam may put an end to any effort to change that.

Can the Disparagement Clause be Fixed?

Tam involved statutory language, so, in theory, Congress could revise the statute and fix the constitutional deficiency. However, that might be difficult since five Justices took a hardline pro-free speech view in Tam. Justice Gorsuch did not participate.

In general, most agree that a trademark is a form of speech. But what kind of speech is it? Competing positions include defining trademarks as:

  • Private speech
  • Government speech
  • Commercial speech
  • Political speech
  • Some combination thereof

There is also an argument about whose rights are in need of protection, those who are speaking or those who are hearing/reading the speech. And, of course, there is Judge Lee’s position that registration is not a form of speech.

In Tam, the government and some of the amici participants proffered the legal position that trademarks are a form of commercial speech. As such, under governing Supreme Court precedent, the  Central Hudson standard should apply. Writing for the majority, Justice Alito did not wholly agree with that position. As he wrote: “… trademarks do not simply identify the source of a product or service but go on to say something more … The name ‘The Slants’ not only identifies the band but expresses a view about social issues.”

However, Justice Alito did not resolve that question since he felt that the disparagement clause was not valid even under the permissive Central Hudson standard of review. Under Central Hudson, a law that restricts speech must meet two requirements:

  • It must serve “a substantial interest” and
  • It must be “narrowly drawn.”

The government offered two arguments for the first prong. The first was that the government has a substantial interest in preventing hate speech. This proposed substantial interest was rejected with Justice Alito quoting Justice Holmes from US v. Schwimmer (1929): “… the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.'”

The second substantial interest asserted was the need to protect the orderly flow of commerce by preventing invidious discrimination. Such has been shown to have an adverse impact on commerce and, it was argued, trademarks that are hateful towards races, genders, etc., will have similar adverse impacts.

It is unclear if Justice Alito accepted this as a valid “substantial interest” since he answered this by moving to the second prong.  He held that the disparagement clause of the Lanham Act was not “narrowly drawn” to accomplish the purpose of preventing invidious discrimination. Chief Justice Roberts and Justices Breyer and Thomas joined this part of Justice Alito’s opinion.

The four other Justices agreed in the result, but took a hardline approach. Justice Kennedy wrote a concurring opinion that rejected the permissive Central Hudson standard. According to Justice Kennedy, the disparagement clause was simple viewpoint discrimination to be scrutinized under the highest level of review. Under that standard of review, he thought the disparagement clause was in violation of the First Amendment. Although Justice Thomas agreed with most of Justice Alito’s opinion, he wrote separately to agree with Justice Kennedy that strict scrutiny was the proper standard.

As can be seen, given the positions taken by the various Justices, it may be difficult for Congress to rewrite the disparagement clause to cure the constitutional defect, particularly if strict scrutiny is the applicable standard.

Tam raises many trademark registration questions.  Will Congress even try and fix the disparagement clause?  Will such efforts succeed? Will other parts of the Lanham Act be struck down? Will we see a rash of possibly offensive trademark registrations? Does the market self-correct in the sense that consumers will reject products having disparaging marks? Does this provide benefits to or create risks for your business?

Contact Revision Legal

We here at Revision Legal are watching the answers to these questions develop in real time. As we have said before, changes in the law affect how you can and should run your business. We learn the changing law so you are free to give your business the attention it deserves. You need the professionals at Revision Legal. In addition to trademark law, Revision Legal has skilled teams of lawyers and staff that can help with trade secrets, copyrights, patents, and all types of litigation.  

We can be reached by using the form on this page or by calling us at 855-473-8474. We look forward to helping your business succeed.

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The Carpenter Case and Other Privacy-Related News

As we discussed in the last few weeks, privacy is repeatedly in the news. Washington lawmakers are trying again to update the Electronic Communications Privacy Act, the Stored Communications Act (the “SCA”), and the Pen Registry Act.

In addition, last month the US Supreme Court granted certiorari in the case of Carpenter v. United States. While ostensibly a Fourth Amendment privacy case, we here at Revision Legal know that privacy frameworks established by the courts under the Fourth Amendment have migrated into statutory law.

Good examples, and also relevant to understanding Carpenter, are privacy laws related to wiretaps and pen registers. In the case of Katz v. United States, 389 U.S. 347 (1967), the US Supreme Court held that citizens had a “reasonable expectation of privacy” in their phone calls and would not expect them to be intercepted or recorded. Thereafter, law enforcement officials were required to obtain warrants for wiretaps. This legal framework was subsequently incorporated by Congress into the 1968 Wiretap Act.

A physical wiretap is not the only method of obtaining information about your phone calls. With various devices generally known as pen registers or trace and trap devices, information can be gathered about what phone numbers you have called and what phone numbers have called you.

In Smith v. Maryland, 442 U.S. 735 (1979), the Supreme Court held that no warrant was needed to obtain that type the information. According to the Court in Smith, there was no expectation of privacy in this information because you know the phone company knows the number you are dialing — in fact, it needs the number you are dialing to make the connection. You have disclosed it voluntarily to a “third party.” Because of this and because the pen register does not intercept your actual conversation, the Supreme Court ruled that use of a pen register or similar device does not constitute a “search” for purposes of the Fourth Amendment. In other words, no warrant is needed.

The permissive rule of Smith v. Maryland was then subsequently adopted by Congress in the Stored Communications Act (“SCA”) and the Pen Register Act (“PRA”), both enacted in 1986 as subsections of the Electronic Communications Privacy Act. This legislation applied various laws concerning telephones and beepers to other electronic communications. Congress incorporated the lenient Smith standard into these new laws. The SCA and PRA allow law enforcement to set up a pen register or obtain certain information about stored electronic communications with an ex parte court order if it is certified that the expected information is “relevant to an ongoing criminal investigation.” See 18 U.S.C. § 3123(a)(1).  That is a much easier standard to meet than the probable cause standard needed for a warrant.

In general, Fourth Amendment privacy cases can be highly predictive of future actions by Congress.

Carpenter v. United States.

Carpenter v. United States raises privacy issues related to what has become known as cell site location information (“CSLI”). Under the SCA and PRA, CSLI information is treated in the same manner as information gathered by a pen register. That is, law enforcement can obtain CSLI information with the basic court order described above. No probable cause need be shown, no warrant is needed.

According to the Pew Research Center, over 95% of Americans own a cellphone and the share of smartphones is now 77%, up from 35% in 2011.

All cellphones collect and store CSLI information. Each cell tower in a service area contains devices that receive and transmit electronic signals. Your cellphone also receives and transmits signals. Your phone “pings” the nearest cell tower, and this enables you to get service. This back-and-forth signaling occurs when you make or receive a call or a text or if some app on your phone signals for an update. If you have a smart phone, your phone is constantly sending and receiving electronic signals as you are connected to the internet. These transmissions are stored and can be used to establish your general geolocation. Given overlapping transmission radii, triangulation can pinpoint your geolocation quite precisely.

This CSLI data is stored by your service providers and the police can obtain a court order to obtain the data from many service providers.

This is the issue raised by Carpenter v. United States. In Carpenter, the defendant was charged with various armed robberies over several weeks. The prosecutors were allowed to introduce 127 days worth of CSLI data showing that the defendant was in the geospatial area of the robberies at the various times that the robberies were committed. The CSLI data had been obtained without a warrant. The trial judge admitted the CSLI evidence over objection and the defendant was convicted. On appeal, the Sixth Circuit affirmed. See Carpenter v. United States, 819 F. 3d 880 (6th Cir. 2016).

The Sixth Circuit held that the CSLI data was similar to the pen register data collected in Smith v. Maryland. Everyone knows that, for their cellphones to work, their phones must connect to celltowers. Moreover, everyone has to set up their phones, enter various information, enable various programs, etc. As such, citizens do not have an expectation of privacy with respect to this information since, in the Sixth Circuit’s view, we all know this information is being shared with our service providers. Therefore, according to the Sixth Circuit, the rule of Smith applies.

The counter-argument is, of course, that information about us — pen register information — is qualitatively different than information disclosing where we are or where we were — CSLI data.

Predictions

Carpenter is a difficult case to predict.

Two recent cases are particularly relevant. In Riley v. California, 134 S.Ct. 2473 (2014), the Supreme Court recognized privacy rights for what we store on our cellphone saying that, in many respects, a search of your cellphone is more intrusive and revealing than a search of your home. In United States v. Jones, 132 S.Ct. 935 (2012), the Court held it unconstitutional for law enforcement to physically place a GPS tracker on your car without a warrant. Some of the Justices were concerned about the physical “trespass” involved; other Justices were concerned about the length of time and the precision of the information gathered and expressed the view that there are significant expectations of privacy about where and when we drive. Both Riley and Jones were unanimous decisions.

One can discern several dichotomies being drawn and discussed in the various cases at the District, Circuit, and Supreme Court levels. Among these are:

  • Historical information vs. real-time
  • Generalized vs. precise information gathered
  • Small amounts vs. large amounts of data gathered
  • Non-content vs. content information
  • Other-gathered (e.g., phone company; service provider) vs. police-gathered

The courts seem to be less concerned about privacy issues with the first in each dyad above. For example, the Sixth Circuit in Carpenter distinguished Riley by noting that cellphones “store vast amounts of information about their users — vastly more, of course, than whether the user happens to be located within a two-mile radial wedge.”

How Carpenter is resolved may foretell future changes to privacy statutes such as the ECPA, the SCA, and the PRA. As we have said before, changes in the law require changes in how business operate.

Contact Revision Legal

We are prepared to help you understand new requirements and possibly new opportunities. We learn the changing law so you are free to run your business. You need the professionals at Revision Legal.

We can be reached by using the form on this page or by calling us at 855-473-8474.

Tips for Avoiding Disparagement of a Competitor

What is Commercial Disparagement?

In the broadest sense, commercial disparagement involves advertising or other public statement including  false or misleading information about a business that discourages consumers from buying from or dealing with that business. There is no requirement that the other business be your competitor, although that is the context in which problems most frequently arise.

Where and What Kind of Claims/Statements Count as Disparagement?

The most common cases of commercial disparagement involve advertising, but disparagement can occur in many types of statements that might not be obvious. For example, product packaging can sometimes implicate issues of competitor disparagement. For example, if your packaging states that your butter is the “only organic butter certified for sale in Lake County,” that might be commercial disparagement. Using the word “only” might be false and misleading if there are other organic butter producers in Lake County.  Even claims with multiple interpretations that a reasonable consumer could read as implying false or misleading information can give your competitor or other businesses a cause of action against you.

You business should also take care to avoid disparagement in these not-so-obvious circumstances:

  • In statements provided by your staff/employees generally
  • In responses to consumer reviews (such as those on Yelp)
  • In consumer reviews made by your customers uploaded to your website
  • In testimonials prompted or purchased by your company and uploaded to social media pages
  • In social media posts made by your business
  • In filings with governmental agencies
  • In press releases and other statements to media outlets

You should create and implement employee policies that limit or at least provide training to your employees about what they should and should not say on social media platforms and other forums. Uncorrected false statements by your employees might cause legal problems.

Vague Claims and Puffery are Probably Okay, but Might Still Lead to Litigation

Aggressive advertising is often essential to maintain and grow your market share. Businesses frequently push the envelope with vague claims and puffery. Puffery is generally exaggerated or indefinite claims about the virtues of your product compared to other products in the marketplace. For example, it is probably mere puffery to claim that your butter “is better than all the butter in all the world.”  The crucial question is how a claim is interpreted by reasonable consumers.

Even seemingly innocuous puffery can cause problems and result in litigation. For example, Pizza Hut took umbrage after Papa John’s Pizza used the advertising slogan “Better ingredients. Better pizza.” Pizza Hut sued Papa John’s, and a jury awarded Pizza Hut nearly $500,000 in damages and barred Papa John’s from using the slogan. The verdict was eventually reversed on appeal, but most businesses do not relish prolonged litigation even when victorious.

What Can Happen if You Disparage a Competitor?

Commercial disparagement can be a form of defamation or libel. Generally, defamation is false, disparaging statements made orally. Libel is false, disparaging statements made in writing.

While defamation and libel are creatures of state law, the following elements are generally required to prove a commercial disparagement:

  • False statement
  • Intent by the person/business to harm (e.g., cause loss of business for the competitor)
  • Actual loss by the competitor; and
  • Malice or reckless disregard for the truth (in some cases)

The range of possible false statements is broad. Aside from comparative claims like those discussed above, other common statements that lead to litigation are claims that a competitor is incompetent, dishonest, unethical, or on the verge of bankruptcy. Reported cases have involved alleged false statements that a product was being sold in violation of a patent, that a shopping mall was unsafe, and that some other product was 40% less effective.

What Should You do if You Get Sued?

If you are facing an actual or threatened commercial disparagement lawsuit, you should immediately contact  business litigation attorneys with experience in this area. The sooner you can evaluate your options, the better you can protect yourself.

As with all claims of defamation or libel, truth is an absolute defense. Even if your statement upset a competitor, you are protected if your statement is true. Privilege is also a defense. Under some circumstance, such as statements made during a court proceeding, your statements are privileged and exempt from possible liability. Another available defense exists for statements that only assert your opinion. In addition, if your competitor cannot show damages linked to your statement, your competitor likely cannot prevail.  

A Few Tips to Help Avoid Commercial Defamation

Here are a few tips to help avoid committing commercial defamation:

  • Document and keep records related to any claims you make — truth is an absolute defense
  • As noted above, instruct your employees’ statements and social media — create employee policies and provide training
  • Monitor customer reviews and comments if you control website content
  • Respond quickly to any claim of disparagement — intent and malice may be defeated if you retract an offending statement quickly
  • Make sure your insurance covers disparagement claims — often part of the “personal and advertising injury” coverage
  • Do not make false statements
  • Contact a good lawyer with experience in advertising law for advice

Contact Revision Legal

Every business needs experienced business attorneys like the professionals at Revision Legal. If you need information or have questions about your advertising, we can offer advice and can help. If you have been sued or threatened, our experienced litigators are here for you.

 

We can be reached by using the form on this page or by calling us at 855-473-8474.

 

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International Trademark Classes: What is the Nice Agreement?

Filing for a trademark through the United States Patent and Trademark Office (“USPTO”) is probably a mysterious process for most people. There are several types of trademark applications and many different filing bases.  

Given the importance of a brand to any business, you and your business would be best served by seeking the advice of  skilled and dedicated trademark attorneys before applying for a federal trademark registration.

One of the more confusing aspects of filing a federal trademark application is understanding how the classification and identification of goods and services in an application affects your rights and the cost of the application. There is an internationally recognized classification system, but, in the United States, the USPTO requires a more specific identification of many goods and services.

The Nice Agreement defines 34 main classes for goods and 11 classes for services. Each main class is then subdivided and then subdivided again.

For example, the trademark application for “Fifty Shades of Grey” specified dozens of categories of goods and services. Among them were:

  • IC 003. US 001 004 006 050 051 052: Soaps; perfumery; oils; cosmetics; waxes; etc.
  • IC 004. US 001 006 015: Candles; scented candles; etc.
  • IC 006. US 002 012 013 014 023 025 050: Handcuffs; etc.
  • IC 009. US 021 023 026 036 038: Recording discs; etc.
  • IC 010. US 026 039 044: Sex aids including ropes; etc.
  • IC 014. US 002 027 028 050: Jewelery; costume jewelery; clocks and watches; etc.
  • IC 016. US 002 005 022 023 029 037 038 050: Printed matter; photographs; stationery; calendars; postcards; greetings cards; books; magazines; etc
  • IC 018. US 001 002 003 022 041: Leather for handbags, whips; etc.
  • IC 020. US 002 013 022 025 032 050: Furniture; mirrors; pillows and cushions; mugs; etc.
  • IC 024. US 042 050: Textiles and textile goods; bed and table covers; rugs; etc.
  • IC 025. US 022 039: Clothing; footwear; headgear; lingerie, men’s underwear; costumes for use in role-play; etc.
  • IC 028. US 022 023 038 050: Games and playthings; soft toys; playing cards; boardgames; gymnastic and sporting articles; etc.
  • IC 033. US 047 049: Wines; spirits and liqueurs; etc.
  • IC 034. US 002 008 009 017: Smokers’ articles; matches; lighters for smokers; etc.
  • IC 041. US 100 101 107: Education services; entertainment services; party planning; production of films; sporting and cultural activities; arranging of conferences, seminars and symposiums; etc.
  • IC 045. US 100 101: Marriage guidance counseling; personal relationship consulting.

This long list shows how one trademark cover a wide variety  of goods and services. It also shows the various international classes (IC) and separate USPTO classifications (discussed below) that are applied to different goods and services.

International Trademark Classes: The Nice Agreement

The Nice Agreement established the international trademark classes shown above with the abbreviation “IC.”  This agreement is an international treaty finalized in 1957 in the city of Nice, France. See USPTO page on the Nice Agreements here.

The Nice Agreement defines 34 main classes for goods and 11 classes for services. Each main class is then subdivided and then subdivided again. All in all, the subdivisions break down into about 11,000 specified goods and services.

In our example above, the “IC 003” references the Nice Agreement international class “003” which is described with the class heading: “deodorants for human beings or for animals; room fragrancing preparations; sanitary preparations being toiletries.” See here.  Class headings provide guidance as to the scope of each international class.

These international trademark classes and categories serve several functions.

First, they help avoid misunderstandings concerning what you want to trademark. For example, downloadable software is classified differently from non-downloadable software.  

Second, the international classifications avoid misunderstandings caused by translation and language issues. Third, the classifications facilitate the location of potentially blocking registrations when your attorney or the USPTO analyzes your trademark application.

As for the other numbers “US 001”, etc., those reference the pre-1973 classes and categories used by the USPTO. They help with the search process, but are no longer the basis for identifying the goods and services being selected. See here.

Nice Agreement Class Numbers Not Sufficient for USPTO

As noted above, under U.S. Trademark law, the classes and classifications established by the Nice Agreement are not, by themselves, acceptable or sufficient for registration with the USPTO. The USPTO requires specific identification of the goods and services for which you use your trademark or for which you plan to use your trademark.  

The Nice classification system is used primarily to calculate the government filings fees at the USPTO.  An experienced trademark attorney can help you identify your core goods and services in a manner that grants you the broadest protection while minimizing the cost of the application.

Contact the Attorneys at Revision Legal

There are many issues to consider when seeking to register a trademark. You need the trademark professionals at Revision Legal to help you through this process.

In addition to helping you with trademark registration and protection, Revision Legal offers a full panoply of services related to trade secrets, copyrights, patents, and litigation.  Our experience can help you identify and avoid potential problems before they happen.

We can be reached by using the form on this page or by calling us at 855-473-8474. We look forward to helping your business succeed.

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PCT Filings: One Method to Seek International Patent Protection

Filing for patent protection with the USPTO is probably somewhat familiar to inventors and businesses here in the United States. However, the options for seeking international patent protections are probably less well known. Consequently, it is important to seek the help of skilled and dedicated patent attorneys to help you evaluate the pros and cons of the two main avenues available for protecting your intellectual property internationally.

The Patent Cooperation Treaty

The first method available is to use the provisions of the Patent Cooperation Treaty (the “PCT”). The PCT is an international treaty completed in 1970 which now has 145 signatory countries.

The PCT was designed to allow inventors and businesses to obtain patent protection in more than one country via the filing of a single patent application usable by all national and regional patient-granting authorities. The actual approval of the patent remains under the control of the various patenting authorities, but bureaucratic proceedings are significantly reduced under this “single-application regime.” The PCT is also single-fee and single-language (the language of your home country).

The process for seeking international patent protection is generally similar to seeking a patent under national laws. Essentially: Application, search, publication and then grant/denial. In a bit more detail, and as described more fully here at the World Intellectual Property Organization website, the steps for a PCT filing are:

  • Filing: About 12 months after you file with your national Office (in Washington, for example), you file the PCT with the same national office, pay the additional fees, etc.
  • International Search: In the same manner as is done for national patents, a search is done of published patent documents and prior art documents to see if your invention is patentable; the search is done by a so-called “International Searching Authority” (“ISA”) one of which is the USPTO; the USPTO or other ISA prepares a report on your invention’s potential patentability.
  • International Publication: This is done around the 18-month mark.
  • Supplementary International Search (if wanted/needed): If you think your patent application might be in trouble (or for other reasons), you can ask for a second ISA search which might uncover additional prior art which might have been missed because of different languages, national, scientific, and technical standards.
  • National Phase: At the 30-month mark, your PCT application goes directly before the national (or regional) patent-granting authorities of the jurisdictions in which you want to obtain patents; in most jurisdictions, a PCT filing is treated just like an ordinary direct filing for purposes of examination; if successful, a patent will eventually issue for that country/jurisdiction.

The Paris Convention

The PCT is an alternative to the well-known Paris Convention, the second main avenue for obtaining international patent protection. The Paris Convention is an international treaty allowing patent seekers to file an application in their home country and have that application set the priority date for subsequent patent applications in other nations and jurisdictions.

Under the Paris Convention, your filing priority is protected for 12 months allowing you and your business time to complete all the national patent applications that you need. The Paris Convention allowed inventors to avoid costly and difficult simultaneous cross-national patent filings and put an end to competitors racing to file patent applications in a foreign jurisdiction and then litigating to determine who had priority.

Advantages and Disadvantages

The two main advantages of using the Paris Convention in seeking international patent protections are familiarity and speed. The Paris Convention has been around a long time and its use and process is familiar to inventors, lawyers, government officials, and businesses. Moreover, the Paris Convention sets a 12-month deadline for completion of applications.

The main advantages of the PCT are:

  • Preservation of your priority for 30 months instead of 12;
  • a single-application filing process; and
  • an international search conducted by the receiving office in your home country.

Another consideration is the number of signatories. While not a large difference, the number of signatories is higher for the Paris Convention (177) than for the PCT (152) as of July 2017. Among the notable non-signatories for the PCT: Argentina, Taiwan, Pakistan and others in Africa and South America. See here for the PCT and here for the Paris Convention.

Filing fees/costs are also significant considerations. If you need patent protection in only a small number of jurisdictions, then using the Paris Convention may be less costly. If, on the other hand, you want more expansive protection, the streamlined application provided by the PCT may be more cost effective.

Your business and your inventions are unique. Good patent lawyers are needed to help you decide which filing process is better for your circumstances.

No Such Thing as an “International Patent”

Neither the Paris Convention nor PCT create a global agency that issues patents. All patents are still issued pursuant to national laws and procedures required by each national and regional patent-granting agency. The Paris Convention was, and is, principally about international recognition of priority dates. The PCT was, and is, principally about standardizing the application process and providing more time.

Contact Revision Legal

There are many issues to consider when seeking patent protection internationally. Every inventor and every business needs experienced patent lawyers to help. You need the professionals at Revision Legal.

We can be reached by using the form on this page or by calling us at 855-473-8474. We look forward to helping you protect your inventions and other intellectual property domestically and abroad.