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.

 

You Might Also Like:

 

Online Advertising and Privacy Discussion

Advertising Disputes: What Forum?

Advertising vs. Trade Disparagement

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.

Related Posts:

Why Trademark? Some Basics

Trademark Registration Process

Protecting Your Registered Trademark

Is Someone Using Your Trademark? A Primer.

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.

The Detroit Red Wings’ Trademark Case Against Right Wing “Identitarians”

It is difficult not to talk about the absolute tragedy, disaster, or other-worldliness of the events in Charlottesville, VA. Plenty of smart people have weighed in on its implications and our President’s response. I won’t add to that dialogue. I am here to talk about Charlottesville and…trademark law.

As a Michigander, I was shocked to see a bunch of racists marching with the Detroit Red Wings’ beloved “Winged Wheel” on their little signs or shields.

Apparently, there is a group of “Identitarians” known as the “Detroit Right Wings” that “participant in regular activism related to the cause of preserving our people.” I am guessing this hate-group has no idea the famous “Winged Wheel” was created by a businessman, James E. Norrs, from (gasp) Montreal!

The Detroit Red Wings immediately shot back stating, “The Detroit Red Wings vehemently disagree with and are not associated in any with the event taking place today in Charlottesville, VA…The Red Wings believe that hockey is for everyone, and we celebrate the great diversity of our fan base and our nation. We are exploring every possible legal action as it pertains to the misuse of our logo in this disturbing demonstration.”

So, what can the Detroit Red Wings do when a bunch of no-good-white supremacists use their logo? Trademark law to the rescue!

Trademarks identify the source of goods or services. And trademark law prevents confusion in the marketplace between trademarks. For example, if Fred’s Coffee Depot was permitted to use a similar logo to Starbuck’s green goddess, consumers might be confused into buying inferior coffee. Trademark law prevents Fred’s Coffee Depot from using a similar green goddess, which attempts to eliminates confusion in the marketplace.

Unlike American citizens, not all trademarks are created equal. Some are strong and some are weak. And some are so strong that trademark law gives them special treatment. These are called “famous” marks. Famous marks are those marks “widely recognized by the general consuming public of the United States as a designation a designation of source of the goods or services of the mark’s owner.” This is a very high standard. But it is very likely the Detroit Red Wings’ “Winged Wheel” qualifies.

Because of its likely famous status, the Lanham Act prevents the “Winged Wheel” from being “diluted,” or more specifically, “tarnished.”  In short, this is when an unauthorized use of a mark tarnishes the positive associations of the famous mark. As the Second Circuit stated, “[t]he essence of tarnishment therefore is…the displacement of positive with negative associations for the mark that…reduces the value of the mark to the trademark owner.”

So, when a porn site operates at <candyland.com>, a porn star wears a Dallas Cowboy uniform in an adult file, or a t-shirt uses BUTTWEISER, the CANDY LAND, DALLAS COWBOYS, and BUDWEISER marks are being tarnished.

And when these little men march around chanting about some delusional belief in what is being taken away from them, advocating for the murder of anyone different than them, and actually murdering Heather Heyer, they are tarnishing the “Winged Wheel.” I know this is petty compared to what is happening, but here’s the point.

The Detroit Red Wings should find these bigots and sue them. Not to protect a corporate asset. But to expose facts about these hate groups. Put their names in the public. Expose their beliefs for public consumption. Make these people defend themselves. Build a record of their hate. Litigate the case to a judgment. Set precedent.

Don’t let these cowards get away with it. That’s not Detroit’s style.

Eric Misterovich is a partner with Revision Legal, an intellectual property and internet law firm.

  1. http://www.freep.com/story/sports/nhl/red-wings/2017/08/14/detroit-red-wings-logo-charlottesville/564139001/
  2. https://en.wikipedia.org/wiki/James_E._Norris
  3. https://twitter.com/DetroitRedWings/status/896398114659217408?ref_src=twsrc%5Etfw&ref_url=http%3A%2F%2Fmashable.com%2F2017%2F08%2F12%2Fred-wings-denounce-racists%2F

Photo credit: Mykal McEldowney/IndyStar

Cannabis Trademark Opposition: A Fanciful Counterfactual Illustration

Parties file oppositions against pending trademark applications for a wide variety of reasons. Often, a party filing an opposition or requesting an extension of time to do so will contact the Applicant before filing or at the same time.  Whether an opposition is expected or not, there are often win-win scenarios that savvy parties can reach quickly and efficiently.  In simple terms, a trademark opposition is an administrative proceeding whereby any party that believes it will be injured by the registration of a pending trademark application may attempt to prevent it from registering. The proceeding is filed with and handled by the Trademark Trial and Appeal Board (“TTAB”).

Applying for a federal trademark can be accomplished online, but an experienced trademark attorney should see potential conflicts before they are created and provide you with an analysis that may let you sidestep such conflicts to the satisfaction of your risk tolerance. An experienced trademark attorney will also help you craft an application that fully protects your key rights and accomplishes your practical goals. For example, if you do not believe you will be able to make it to market with your goods for more than a year, a good trademark attorney can extend the application process to avoid extension fees and save you money.  

A good trademark attorney will also tell you what to expect procedurally and keep you updated as he or she shepherds your application through to registration.  Once your application has been approved by the Examining Attorney at the Trademark Office, it is published in the Official Gazette, which is a list of all recently approved trademark applications read exclusively by automata and trademark attorneys.  If a third party, or more likely that party’s trademark attorney, believes that it will be injured if your application matures to registration, it may file a Notice of Opposition during the thirty (30) day publication period.  An Opposition is an adversarial proceeding, but both the Applicant and the Opposer frequently have good options as long as they have skilled trademark attorneys looking out for them. See TBMP § 309.03(c).

Cannabis Trademark Opposition: A Fanciful Counterfactual Illustration

One of the many grounds for denying trademark registration or opposing a published application hinges on whether your identified goods and/or services are legal.  One interesting example about which there is considerable disagreement is the identification of goods containing naturally derived CBD.  Although it seems clear that goods comprising CBD do not run afoul of the Controlled Substances Act, some believe that they do conflict with the FDA’s regulation of dietary supplements.

For a more cut and dry hypothetical let us assume that the Jeff Sessions forgot to tell the Trademark Office that distribution and recreational use of marijuana is not legal in his United States. Let us say the Trademark Office staff is dazed and confused. Legal marijuana sales in North America are expected to top $20.2 billion by 2021.  More than half of the states have decriminalized some form of possession and/or use of marijuana.  Eight states and the District of Columbia (excluding federal property) allow recreational marijuana use and another 21 states allow medicinal use.

So, continuing our hypothetical, let us say you run a thriving cannabis farm in Oregon.  You want to register a trademark involving the word “hi” in white letters inside an orange circle. (This part of the story is true.)  You enjoy your trademark because you like double entendres. So do your consumers who develop a fierce brand loyalty.  You also offer a cannabis-based balm that provides pain relief under the mark RE-LEAF.

Even if the Trademark Office approves a federal trademark application for HI identifying the actual goods and services your provide, you may find that a neighbor of Jeff Sessions has been waiting for the publication of your application so that he may file a Notice of Opposition and attempt to block it from registering.

Shockingly, this neighbor owns a large cigarette company and claims that the sale of marijuana cigarettes will decrease the sale of tobacco cigarettes injuring the neighbor’s company in the process. You are outraged but calm and call your trusted team of trademark attorneys.  They move quickly to respond to the Notice.

In the following weeks, you and the Opposer might attempt to work out a settlement agreement solidifying the rights of both parties, file motions, and engage in discovery.  If both sides refuse to compromise, depositions may be taken, sworn statements may be prepared, documents will be accumulated and expert opinions may be solicited.  During this time, both sides are building the towers of paper needed to make their cases.  For the most part, proceedings before the TTAB are conducted through paper filings without oral argument.

In our counterfactual, all the evidence from the tobacco company boils down to: “Hey, marijuana drug use is illegal.” You and your lawyers do your best, but, in the end, the TTAB says: “Wow, marijuana is illegal at the federal level. Who knew!?!” The TTAB then rules in favor of the Opposer and denies your application for trademark registration. You are outraged in the morning, but, by late afternoon, you are mellow.

Many Options: Even for a Seemingly Bad Case

In the real world, there are many tactics and strategies available to an experienced trademark attorney even if you have a loser of a case like the one described in our hypothetical above.

First, a skilled trademark attorney will help you craft your initial trademark application to avoid hypotheticals like the one above.  Not only would a trademark attorney advise against filing an application containing obvious flaws, he or she should be able to survey the existing third-party registrations and side step potential conflicts.

Second, under more normal circumstances, a reasonable trademark attorney may be able to negotiate a settlement with the Opposer.  Often, the parties are both happy to reach a “coexistence” agreement.

Third, a trademark attorney may be able to “fix” your application if there is a significant danger that the Opposer will succeed.  Knowing when to concede and what points to concede is an important skill.  One of the most common claims made in a Notice of Opposition is that the opposed application creates a “likelihood of confusion.”  If the only goods identified in your application that the Opposer actually cares about are goods that are not central to your business, it may be in your best interest to delete those goods from your application to pacify the Opposer and reduce any likelihood of consumer confusion.

Finally, a trademark attorney who has been down this path many times can help you decide if it is worth appealing an adverse decision.  Appeals can be made directly to the US Court of Appeals for the Federal Circuit or to your local US District Court.  There are benefits and drawbacks to each avenue of appeal.

Contact Revision Legal.

Registering trademarks is complex and multifaceted. To do it right and to avoid missteps that can lead to opposition proceedings, you need skilled trademark attorneys like those at Revision Legal. We can help you and your business navigate the complexities. Contact us today.

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.

You Might Also Like.

What Is A Trademark Opposition Proceeding?

Trademark Opposition & Cancellation: Procedure

Trademark Opposition & Cancellation: Grounds I

Trademark Opposition & Cancellation: Grounds II

Defenses In An Opposition Proceeding.

First Step In Preparing A Defense To An Opposition Proceeding

udrp proceedings

UDRP Proceedings: Solving Domain Name Disputes

If a dispute arises over use and/or registration of an internet domain name, resolution of the dispute is accomplished through proceedings under the Uniform Domain Name Dispute Resolution Policy, known as UDRP proceedings, administered by the Internet Corporation for Assigned Names and Numbers (“ICANN”). ICANN is a private, non-profit organization formed specifically to control web domain name registration, use, and management. See their webpage here.

What’s Involved in UDRP Proceedings

A UDRP proceeding is an administrative proceeding very much like arbitration. UDRP proceedings are handled through ICANN accredited providers (“Providers”), like the National Arbitration Forum.

Instead of a judge and jury, the matter is heard by one person or a panel of three decision makers. ICANN calls them “Panelists.”

UDRP proceedings begin with a Complaint being filed with a ICANN Provider. The person or business starting the process is called the Complainant and the person/entity being charged is the Respondent. At the time of filing the Complaint, the Complainant must also pay the required filing fees, which range from approximately $1,300 – $4,000 in most cases, depending on the number of domain names at issue, the number of Panelists selected, and the Provider’s terms.

After the Complaint has been filed, the respondent must file a written Answer.

The parties may choose a single-person panel or a three-person panel. In a single-person panel, the Provider chooses the Panelist. For a three-person panel, one is chosen by the complainant, one by the respondent and the third Panelist is selected by the Provider. The UDRP procedures and rules are set out here.

In general, in a domain name dispute, the complainant must prove three elements:

  • The complainant has a trademark, personal name or service mark and the challenged domain name is identical or confusingly similar to same
  • The respondent does not have any rights or legitimate interests in the domain name
  • The domain name has been registered and the domain name is being used in “bad faith”

While questions often arise as to whether the complainant has valid trademark rights to enforce, it is more common for legal issues to turn on the second and third factors, being the “legitimate interests” and “bad faith” elements. Among the facts that a Panel will consider on these questions:

  • Does the complainant have a registered trademark?
  • Did the respondent register the domain name primarily for the purpose of selling, renting, or speculating on the domain name?
  • Does the respondent use the domain name and to what extent?
  • When was the domain name registered vis a vis the complainant’s trademark, professional name popularity, business use, etc?  In other words, was the domain registered long ago, long before the complainant became famous?
  • Has the respondent engaged in a pattern of registering domain names for speculation purposes?
  • Is the respondent a business competitor or other who might have reason to disrupt the complainant’s business/profession?
  • Can the respondent be seen as using the complainant’s mark or popularity for commercial gain or for driving internet traffic to the respondent’s website?

UDRP Proceedings: Appealing a Loss

If a respondent loses a UDRP proceeding, the domain name(s) in questions will automatically be transferred to the complainant. However, the respondent can prevent the transfer by filing an action in a court of competent jurisdiction. Importantly, the complainant is required to specifically submit to jurisdiction either where 1) the relevant domain name registrar is located or 2) where the respondent is located. While these are not the only courts of “competent jurisdiction,” it is likely any lawsuit would be brought in those arenas to avoid issues of personal jurisdiction. This lawsuit must be filed within 10 days of the order transferring the domain names, which places a burden on the respondent to act quickly.

Technically, the lawsuit filed to stop the transfer is not an “appeal.” The court handling the lawsuit is not bound by the UDRP decision and does not award it any deference whatsoever. The issues are reviewed de novo, or like for the first time.  

UDRP Proceedings and Domain Name Theft

Domain name theft is when someone hacks into your relevant accounts and unlawfully transfers ownership of your domain name to some new person or entity. Forbes had an article about how ShadesDaddy.com had its domain name stolen. ShadesDaddy sold, and still sells, sunglasses. They were able to recover their domain name, but not without a lot of time, legal expense, and lost sales.

The issue is not just the value of the domain name itself, but the risk of some competitor making use of your stolen domain name. In the case of ShadesDaddy.com, the hackers sold the name to a business in China. As Forbes quoted: “The domain name now redirected to a Chinese website that sold counterfeit merchandise from sunglasses to anything else you could imagine. They had all of our traffic and we were losing thousands of dollars daily in revenue.”

Some victims of domain name theft have successfully used UDRP proceedings to recover their domain names.

However, the interplay between domain name theft and UDRP is complicated and controversial. In theory, a complainant will have a stronger case if he or she can establish strong underlying trademark rights. But, if the complainant has weak rights, or none at all, there is a risk of not being able to satisfy the first UDRP element. And because domain investors often passively hold domain names, rather than fully developed a business and corresponding trademark rights, some domain theft cases are left as an awkward fit for UDRP proceedings.

A theft victim might also have difficulty showing the second and third elements if the respondent is some bona fide third, fourth, or fifth purchaser of the domain name. They will claim that they had no idea that the name was stolen and they might be using it legitimately to run their business. Under those circumstances, a theft victim cannot show the bad faith and lack of legitimate right/interest needed to win a UDRP proceeding.

Just as importantly, some UDRP panelists believe cases of domain theft are simply outside the scope of UDRP proceedings and should be brought in a traditional court.  If you are a victim of domain theft, it is best to seek specific and tailored legal advice for your situation.

Contact Revision Legal

Every business needs an experienced internet lawyer to help navigate complex domain name legal issues. If you are the victim of cybersquatting or domain name theft, call the professionals at Revision Legal. We can be reached by using this form on our website or by calling us at 855-473-8474. We look forward to helping you.

You Might Also Like

The Interplay Between Trademarks and Domain Names

IP Strategies For Startups

The UDRP Process

What You Need To Know About Business Contracts

Business Contracts 101: The Basics

When you are running your business, almost everything you do is contractual, even if you do not see yourself as making and accepting contracts. If you email over a purchase order to one of your suppliers, that is a contract.

In business, contracts can be quite simple. They can also be quite complex.

Contract Formation Basics: Offer, Acceptance, and Consideration

The basics of contract formation are offer, acceptance, and consideration. “Consideration” is a legal term that means “something of value given.” If you offer to sell your particular red car for a $100 and Maria says “okay,” then you have offer and acceptance. Maria then gives you the cash and you sign over the title. This is a simultaneous exchange of consideration. A legal contract was formed and then almost immediately consummated.

In theory, once a contract is consummated, it fades out of legal existence. However, case law and statutes have appended onto contracts various obligations that might keep the contract lingering for awhile. For example, did Maria buy the car “As-Is?” or is she expecting the car to run perfectly for another 100,000 miles? This gets to the concept of “merchantability” and “fit-for-intended-use.”

Promises have value, so an exchange of promises is valid consideration in most circumstances. If Maria gives you the cash right now and you promise to deliver the car tomorrow, that is a binding contract for both of you. You are bound because Maria gave consideration consisting of cash ($100) and she is bound because you gave consideration consisting of a promise (future delivery).

The vast majority of retail and internet businesses operate on just these sorts of simple contracts. A grocery store piles up fruits and vegetables with prices listed. Essentially, that is an offer. If you go in and pick up a head of lettuce and take it to the cashier, you have accepted (and, of course, you are accepting at the price listed). You and the store then have a simultaneous exchange of consideration when you pay that price and then leave the store with your lettuce.

Written, Oral, and Course-of-Conduct

Contracts can be written, oral, or course-of-conduct.

Most business relationships involve all three types of contracts. For example, you and your business sign a written Vendor Agreement with your widget supplier. After a few months, you want a bulk discount. The owner of the widget factory says, “yes, if you buy 10,000+ plus units, I’ll cut the price by 10%.” You say “great.” The mutual promises and eventual performances are the consideration.

But you never get around to writing the bulk discount agreement into the written Vendor Agreement. Nonetheless, you have a legally binding contract. As your business relationship continues, over the next weeks and months, you receive invoicing from the widget factory showing the discount and you pay the lesser amount. Under the law, you now have a “written memorialization” of an oral agreement. The combination of oral agreement and written memorialization is strong and binding on both parties.

Now, one day, a box of widgets arrive that are broken and bent. In legal parlance, they are non-conforming goods. You send then back to the widget factory. You do not call or email or get permission; you just send them back. Nobody says anything, nothing is written down, but the factory sends you a replacement box containing perfect widgets. Over the years and months this happens a few times and the same thing happens each time. This is a contract via course-of-conduct.

Uniform Commercial Code (“UCC”)

If your business involves the sale of goods and products, then your commercial dealings are covered by the provisions of the Uniform Commercial Code (“UCC”). Because business is fast, manufacturers and sellers do not always have time to get the legal niceties reduced to writing. One purpose of the UCC was to provide statutory provisions that cover problems like non-conforming goods, fitness for use, etc. So, in the widget example, if there is a dispute, the parties have their course-of-conduct to rely on and they also have recourse to applicable UCC provisions.

The UCC consists of a series of numbered sections, each dealing with specific categories of commercial activity and how to deal with certain problems, such as impossibility of performance. At present, versions of the UCC have been enacted in all 50 states and the District of Columbia. The Wikipedia page on the UCC can be found here.

Complex Business Contracts

Despite the help provided by the UCC, truth is, it is not wise to rely on oral and course-of-conduct contracts in running your business. They pose risks and those risks are unnecessary. The best business practice is to have all essential agreements reduced to writing with the help of good business lawyers. The more essential some agreement or relationship is to your business operation, then the more essential it is to get it in writing. This is true with

  • Key suppliers
  • Key distributors
  • Landlords and/or mortgage holders
  • Franchisees and licensees
  • Employees
  • Creditors, investors, and other financial-related arrangements

The main problem with oral and course-of-conduct contracts is that, unknowingly, the parties might be using different definitions of key terms. Likewise, over time, expectations diverge or new situations arise and now the parties are acting on conflicting understandings. A written contract avoids these pitfalls.

As an example, Forbes reported a business “war story” concerning the words “responsible for.” The boss and his commission-based employee made an agreement verbally whereby if the employee was “responsible for” X amount of new business, then the employee would get Y amount of money. The employee is reported to have said: “Great.” Six months later the employee said she was owed a significant sum for generating new business. The Boss said: “You were not involved in those projects.” She said, “Well, I coached the person who landed the deal, which makes me responsible for it.” Obviously, the term “responsible for” was not clearly defined.

A good written contract will specify and clearly define important terms.

Another unnecessary risk involves transferability. A good written contract is easily transferable to new owners and/or to new business circumstances. Oral and course-of-conduct agreements tend to be people-centered and do not necessarily transfer easily if there is a sale or change in personnel.

The Interplay Between Running Your Business and the Business Contract

Every business has three basic goals: maintaining the current and expected volume of business, exploiting upside potentials, and avoiding downside risks.

The main purpose of all of your business contracts is to cement and reinforce these three primary organizational goals. If, for example, maintaining “current volume” depends on you having sufficient supplies of widgets, then you need a good, solid, legally binding contract with your widget supplier. Or, if you need dependable loyal employees, then you need a good set of employee contracts that include non-compete and confidentiality clauses.

If the “upside” you want to exploit is a new use for some trade secret, then you need legally enforceable contracts with licensees clearly setting out the terms of use, royalties, confidentiality provisions, etc. A well-drafted licensing agreement written by skilled trademark attorney can protect your “upside.” Likewise, “downside risks” can be ameliorated with binding business contracts that contain, for example, liquidated damages for the non-delivery of widgets.

In addition, buying and selling businesses require written business contracts to ensure all the parties are getting the benefits of their bargains. Financing arrangements also must be in writing to fully protect your business interests.

Contact Revision Legal

Every business needs experienced business attorneys to help draft and review complex business contracts. 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 your business succeed.

Related Posts:

The Importance of Non-Compete Agreements

IP Strategies For Startups

Business Contracts and Material Breach

In general, a breach of contract is any failure to perform what you agreed to do. Examples would be:

  • Failure to deliver the goods promise
  • Failure to deliver the goods in a timely fashion
  • Failure to pay, etc.

Contractual obligations are set forth in the contract between the parties. If the contract is in writing, a court will generally look to the “four corners” of the written agreement to determine what was agreed. The court will then compare what was agreed to what was done. If there is a material variance, then the court will declare a material breach and damages will be calculated and a judgment issued. Problems arise when contracts are oral and based on course-of-dealing. But even under those circumstances, courts will look to what was said and done in the course of dealings and, from that, the court will determine what was agreed.

If your business involves manufacture and sale of goods, in addition to what is written in your agreement, the law will often “add” various provisions, called “implied provisions.” This is done principally through the Uniform Commercial Code (“UCC”). The UCC consists of a series of numbered sections, each dealing with specific categories of commercial activity and how to deal with certain problems, such as impossibility of performance. See discussion below. Versions of the UCC have been enacted in all 50 states and the District of Columbia.

These implied provisions can give rise to breach of contract claims. For example, UCC Article 2, section 314 imputes into commercial contracts and dealings an implied warranty of merchantability. Basically, this means that any goods made or sold must be suitable and saleable for the intended purpose. So, even if your specific written agreement does not define “merchantability,” your buyer could still claim breach of contract if the goods in question do not meet the standards.

Breach of Contract Remedies

In general, when a party breaches a contract, that party can be sued and can ask a court of competent jurisdiction to compensate the nonbreaching party. Such compensation might include:

  • Payment of the purchase price
  • Interest
  • Return delivery or restocking costs
  • Lost profits
  • Other losses that are reasonably foreseeable
  • Specific performance

The UCC also provides some self-help mechanisms such as a seller withholding or stopping delivery of goods where the buyer has failed to pay for previous goods or where the buyer has stated that payment will not be made. Buyers also have self-help mechanisms, the most important of which is the right to refuse non-conforming goods. However, a buyer must be careful to make an “effective rejection.” Any use or long-term continued possession of the non-conforming goods might be seen as acceptance of the goods. Failure to pay under those circumstances would give the Seller a claim for breach of contract even though the goods did not conform.

The remedy of specific performance is another complex area of the UCC. In general, for breach of contract, you are entitled to all of the monetary damages necessary to fully compensate you for your losses. However, sometimes money damages cannot provide full recovery. This most often involves cases of unique products. See UCC 2-716 (1). Under such circumstances, specific performance can be ordered. Essentially, the court ordered the parties to perform the contract. As example, say you are an interstate dealer in vintage automobiles. Vintage cars, in particular, are rare and, as time passes, they become more unique. If you fail to deliver a vintage car under contract, a judge might order specific performance and require you to deliver the specific unique automobile.

As you can see, issues involving commercial transactions and the UCC are complex. You will need experienced legal counsel to help you. Further information on the UCC can be found here.

Sometimes Non-performance is Not Material Breach of Contract

There are a few circumstances in which non-performance of your obligations under a contract will not be considered breach of contract.

One such example is when your nonperformance is considered non-material. In general, only a material breach of contract will give rise to a lawsuit. To use a simplistic example, say you contract with a tailor/seamstress to custom-make clothes for your wedding-party. The tailor/seamstress agrees in the written contract to deliver by August 1st (and the wedding is scheduled for October). If the clothes are delivered on August 2nd, that might be a technical breach of contract, but it might not be a material breach particularly since the wedding is many weeks off.

Material breach vs. non-material breach is decided by the courts on a case-by-case basis. The courts consider many factors including:

  • How much of the contract has already been performed and will/can the breaching party finish performing the contract?
  • Was the breach intentional, negligent or an innocent mistake?
  • What were the real world consequences of the breach?
  • Is there unjust enrichment or some other inequity?
  • What are the actual damages?

In our seamstress/tailor example, you can see that all the factors weigh heavily in favor of deeming the breach nonmaterial. The clothes are finished, the one-day delay was probably innocent, there are no real-world consequences since the wedding is in October, it would be unfair to absolve the wedding party of having to pay for the clothes under these circumstances and there are no actual real-life damages.

Material breach and nonmaterial breach also touches on legal issues involving substantial performance. In many commercial transactions, depending on the case, substantial performance will be deemed sufficient performance.

These Legal Principles Apply to all Business Contracts

The legal principals discussed above apply to all business contracts. The UCC does not cover the provision of services, for example. But similar legal issues related to breach and nonperformance will apply to any contract whereby you agree to provide services. The courts will use the legal principles underlying the UCC and will come to similar results. Thus, if you are providing tax preparation services and your services are essentially non-conforming, your customers may be able to sue for breach of contract even if your written contract is silent on the issue of nonconforming services.

Contact Revision Legal

Commercial transactions can be confusing and distracting. Every business needs experienced business attorneys to help draft and review complex business contracts which leaves you 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. If you are being sued or being threatened with suit for breach of contract, we can help. We look forward to helping your business succeed and protecting your legal rights.

Managing an International Trademark Portfolio

Because trademark protection is territorial in nature, managing an international trademark portfolio is complex. Your company may have one trademark or hundreds, in either  case you need experienced and skilled trademark legal counsel who will help you prioritize and protect your portfolio.

The general issues for managing any trademark portfolio are:

  • Creation (or discovery) of a strong trademark
  • Registration (including pre-registration research on prior use, other use, similar use, etc.)
  • Renewal, filings and annual fees
  • Use of the trademark, which is required in some countries but not in others (proper company use and use by affiliated/owned companies, franchisees, and licensees)
  • Protecting your trademark so it remains distinctive
  • Monetizing (via “use-of” contracts and licenses; writing, monitoring, renewing)
  • Collateralizing (via financing agreements)
  • Enforcement (litigation and political action)

International trademark portfolios add an array of complexity depending on how many countries and languages are involved.  A non-exhaustive list of additional issues include:

  • Variable and differing trademark registration regimes (national, regional, and international)
  • Varying use-of requirements
  • Translation/transliteration of trademarks into new languages, alphabets, and symbol systems
  • Dynamics of local markets (which might differ significantly from one to the next and from the US market)
  • Differing local laws (including issues concerning trademark use, registration, protection, and enforcement)
  • Differing local policing policies and priorities regarding preventing counterfeiting (in real space and on the internet)

Proper Portfolio Management Means Registration With the Right Regime

As we discussed recently, the Madrid System is an expansive international trademark registration and protection system governed by multi-party, World Intellectual Property Office-administered treaties. As of July 15, 2017, 114 countries had joined the Madrid System.

The Madrid System provides a centralized trademark filing and registration for all Contracting Parties. The main advantage is that your company can obtain trademark protection in more than one country using a single application through your home country.  That is, if you filed an application for a trademark in the United States, that same application can be used for registration in any of the countries that have joined the Madrid System. The Madrid System also facilitates the translation of multiple languages so that if you file your application in a language with which you are familiar, the trademark registration process will be completed in that language. The Madrid System has some obvious advantages.

There are, however, some reasons the Madrid System may not be the best option for your business even if it is seeking trademark protection in many countries.  For example, the Madrid System makes every registration you obtain through its centralized process dependent on the trademark registration in your country of origin for five (5) years.  If the trademark registration from your country of origin is abandoned, canceled, or if it expires within this five-year window, all foreign registrations obtained through the Madrid System using your home registration are at risk.

In addition, the Madrid System may not be broad enough for your needs.  Several countries in the western hemisphere have not joined the treaties that facilitate the Madrid System. Notable missing nations are:  Argentina, Brazil, Canada, Chile, Venezuela, Panama, Belize, Peru, and others.

If you only seek registration in one other country, it may be more cost-effective and safer to work through local counsel in that country.  The regional registration regimes include:

  • European Union Trade Mark (“EUTM”) system (EU member states)
  • African Regional Intellectual Property Organization (“ARIPO”) system (English-speaking African nations)
  • Organisation Africaine de la Propriété Intellectuelle (“OAPI”) system (French-speaking African nations)
  • The Andean Pact (reciprocal recognition regime covering Bolivia, Colombia, Ecuador, and Peru)

An experienced trademark attorney can help you decide which registration regime is the best for your company and can help prepare file your application(s).

Proper Trademark Portfolio Management Means Regular Auditing

Regular and routinely scheduled trademark auditing is essential for managing international portfolios. Maybe you and your business have already done the registration(s). However, is the registration correct? Could the registration be better?

One of the issues mentioned above is the varying “use-of” rules under the different national, regional and international registration regimes. Under the EU rules and under the Andean Pact, business use of your trademark in one signatory nation usually will be sufficient to constitute “use-of” in all the signatory nations. That is not true for registration under the Madrid Protocols. So, a trademark audit is essential to ensure that you and your business have registered under the best-for-your-business regime.

Proper Portfolio Management Means Policing Trademark Rights — International Challenges

In general, you and your business need good policing and enforcement strategies that protect your trademarks from infringement. The basic list is:

  • Marketplace Monitoring
  • Investigating possible infringements and counterfeiting
  • Warning and prosecuting those who are infringing
  • Seeking police/regulatory action for counterfeiting, piracy, etc.
  • Engaging in political action/lobbying for statutory and regulatory changes where needed

These strategies are more challenging with a portfolio of international trademarks. For example, you and your business must employ citizens in the countries in which you do business to monitor the marketplace. Warnings and legal prosecutions must be done in the local language. Local customs may need to be evaluated, understood and factored in. Seeking government or regulatory intervention will require local citizens familiar with local politics and procedures.

Proper Management of an International Portfolio Means Navigating Language Issues

International business requires using all the languages of the world. This requires proper translations. But the challenge is not just word-for-word translations. Proper trademark management has to contemplate dialect, idiom and “street usage” of the local tongue. In a famous example from years ago, Ford Motor Company sold a car called the Pinto. In Brazil, the word “pinto” was street slang for male genitalia. Ford would have been better off rebranding the car model for that market. Proper trademarking management can help avoid snafus like this.

There are also numerous challenges with languages, like Russian and Greek, that use a different alphabet and those, like Chinese and Japanese, that use symbols and ideograms. As an example, the Chinese employ about five thousand ideograms in day-to-day usage. The key to successful marketing and trademarking is for local consumers to be able to read, pronounce and remember the brand/mark. So, if you want your trademark to succeed in China, you need the right ideogram or combination thereof. In another example from the Huffington Post article linked above, the famous “Got Milk” campaign in the United States was translated in Mexico as “Are You Lactating.” Obviously, that was a failure.

To properly manage your portfolio of international trademarks, you and your business must navigate these types of language issues.

Proper Trademark Portfolio Management Means Technology and Staffing

To manage a portfolio of international trademarks, you and your business need technology and trained staffing. You can use software as simple as Excel or buy tracking and scheduling software that is specific to trademark issues. The preferred software systems facilitate online access allowing entry of relevant information into the database from anywhere and from any and all employees tasked with monitoring and protecting the trademarks. The best software also provides for easy manipulation of the data and generation of various reports. This creates efficiencies, centralizes the task management, avoids duplication and thereby saves money.

Proper Portfolio Management Means Hiring the Right Lawyers

Managing and protecting your international trademarks is complex and multifaceted. To do it right, you need skilled trademark attorneys like those at Revision Legal. We can help you and your business navigate the complexities. 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 us today.  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.

You Might Also Like.

Why Trademark? Some Basics

Trademark Registration Process.

Auditing Your Intellectual Property: How and Why?

Is Someone Using Your Trademark? A Primer.