Effective brand protection strategy
- Having an internationally well-known brand is both a blessing and a curse, panelists Susan Stearns, IP counsel for Edible International and Helen Wu, IP counsel for JetBlue, agreed. On one hand it points to the company’s success. On the other, “success breeds imitation”, as the adage goes, and finding a strategy to counteract endless instances of infringement around the world in diverse national courts and with limited resources can be the toughest part of brand management.
- Wu and Stearns emphasised that filing for trade mark registrations defensively, before the business is operating and marketing in that area, is usually a good idea. However, depending on the national laws, keeping a registration that’s not in use can be a challenge. This is why it’s important to communicate and coordinate with the rest of the business, to strategically time applications. Another defensive strategy could be to register misspellings of your mark, and also go after related domain names.
- Regarding international treaties like the Madrid Protocol, this panel agreed that they should not be jumped into lightly. Between renewal fees and the risk of widespread cancellation, the benefit of covering a mark in many countries may not be worth it, and targeted national registrations can sometimes be equally effective.
- No matter how wonderful your defense strategy is, infringement will likely occur, which is when degree matters. Danielle Maggiacomo, associate at Frankfurt Kurnit Klein & Selz, explained her practice of “consistently managing inconsistencies,” which is essentially to only act harshly against the most offensive infringers with cease and desist letters, and otherwise to negotiate more gently.
- In the case of Edible International, Stearns said the company takes each case of infringement very seriously and acts aggressively, because “our brand is on the endangered list of going generic.” Another mounting issue for Edible is the growth of the legitimate cannabis industry, in which “edible” is a popular term for certain products.
- However, harsh crack-downs are not always the answer, mostly for PR reasons. When Family Guy did a parody of edible arrangements, the company did not bring any action against them. JetBlue’s Helen Wu said: “It’s a tricky balance. We don’t want to alienate fans,” like when Nutella sent a cease and desist to a superfan who had marshalled her followers to organise World Nutella Day, “but we don’t want to set a precedent of allowing infringement that could come back to bite us later.”
The opposition system in Mexico
- Carlos Pérez De La Sierra, partner at Calderón, discussed that Mexico's new opposition system was implemented in 2016 to solve the problems of registrations being applied for in bad faith, and cancellation proceedings’ costs. The proceedings were very expensive and would often take years to resolve.
- The new strict timelines – 30 days to oppose, 30 days to respond – certainly help cut down the time and money issue, but introduce a new problem: there is not enough time to compile proper evidence. Also, there is not a TTAB-equivalent in Mexico, so proceedings are in the hands of examiners who are not required to consider oppositions, and often elect not to.
- However, even if oppositions are examined, other problems can arise. Anyone can file an opposition in Mexico, even entirely unrelated parties. There have been multiple instances already of questionable opposers challenging entertainment companies’ marks, and causing trouble for legitimate businesses.
- Pérez revealed that a Congressman introduced legislation this year to "maybe change things in the right direction." Examiners would be compelled to take opposition into consideration and introduce closing arguments.
- At this point, he says “oppositions are a good tool,” but parties should pursue direct negotiations where possible.
International trademark issues concerning piracy and counterfeiting
- 85% of counterfeit goods stopped by US Customs at the border are from China, and the practice has increased 10,000% over the past 20 years, enabled by globalisation and the internet.
- Pamela Weinstock, general counsel at Kenneth Cole, noted: “You don’t want to be in the clean-up stage – get ahead of the problem.” She recommended stopping the problem before it materialises by educating all those involved, and monitoring products’ authenticity throughout the supply chain. Technologies like tracking IDs, holograms or blockchain can play a role in verification. Weinstock also recommends obtaining registrations in higher risk areas, making enforcement easier should it come to that.
- Licensees can serve as eyes and ears beyond the registration-holding entity, as they are equally motivated to preserve the value of the brand. Retailers can also be good partners, as they could be held liable for enabling counterfeiters and will often cooperate out of self-preservation.
- Chasing counterfeiters can be an endless venture, so it’s important to prioritise. This panel suggested conducting a risk-cost analysis, and going after counterfeit products in categories that are potentially the most harmful, such as baby formula or skincare products. Weinstock called counterfeiting “a whack-a-mole problem”. Going after every case of infringement would be prohibitively expensive, so allocate resources wisely.
- Pursuing enforcement via the International Trade Commission (ITC) makes sense if counterfeiting efforts are caught soon, but a temporary restraining order (TRO) may be more effective if the counterfeits are already widespread within national boundaries.
- A nicer way to deal with counterfeiters is to invite them into a licensing agreement.
Repercussions of trademark law post Matal vs Tam and In re Brunetti
- “Excuse me if I may curse,” said Lisa Mottes of Fitzpatrick, before giving a run down of the history of marks not allowed and allowed under Section 2 of the Lanham Act.
- In Matal v Tam, the Supreme Court found in June 2017 that that Section 2 – which prohibited the registration of disparaging marks – violated the first amendment, and ruled: “Speech may not be banned on the ground that it expresses ideas that offend.” It was a split decision, and Judge Dyk notably dissented, concerned about the scope of its implications. He opined that the clause was facially constitutional, only improperly applied in this case.
- The landmark decision was followed by a spate of vulgar registration applications at the USPTO, as well as an interpretation of it by the Court of Appeals for the Federal Circuit (CAFC) with In re Brunetti. The CAFC found Mr. Brunetti’s mark “FUCT” undoubtedly scandalous, but following Matal v Tam, ruled the mark registrable despite its vulgarity on first amendment grounds.
- The Department of Justice (DoJ) has requested a full court review of the CAFC’s decision, but panelist Nick Bartelt, assistant director of Fordham IP Institute, said it is “unlikely a rehearing will be granted.”
- If the DoJ petitions for cert, Bartelt mused, “maybe they’ll clarify it since there was a plurality, and go back to consider Judge Dyk’s position.”
When does it make sense to litigate?
- This panel identified the top five things to evaluate when considering litigation: viability of claims, budget, PR, strength of reputation, and alternatives.
- Michael Crane, former chief business counsel at Capital One, emphasized that deeply exploring the viability of a claim is necessary before pursuing it. Maybe an infringement claim would be invalid because of an old agreement between the parties that would take research to dig up. Or perhaps what one calls infringement, another might call parody or fair use. George Wukoson, senior counsel at Ziff Davis, shared his practice: “Draft the whole argument and counters on the front end, to get a solid sense of the likelihoods and if it’s worth the cost.”
- “The worst thing you can do is underestimate your budget,” Crane said. It’s important that everyone potentially involved, up to the CEO, has an understanding of the financial burden and time commitment that litigating entails.
- Litigation is the most aggressive way to enforce trade mark rights. From a PR perspective, this can be a problem. Brands’ value is derived from consumers’ perception, so public legal battles can damage this value.
- On the other hand, strongly enforcing a brand with litigation can be a warning signal to would-be infringers, and serve to establish a reputation that pays off over time.
- From inviting an infringer into a licensing agreement to working with US Customs, sending cease and desist letters, filing domain name complaints, coexistence agreements, or mediating, there are many alternatives to litigation.
Social media concerns
- Social media can be a great tool to reinforce brands by engaging with consumers directly. On the other hand, whatever value it grants can also be taken away in an instant. This panel focused on finding balance in the inherent dichotomy between legal and marketing; brand protection and PR.
- The solution is to be vigilant. Search every hashtag you use in trade mark databases to avoid infringement. Regularly check your own brand on social media networks to catch any infringement early.
- If you engage a social media influencer to promote your brand, communicate the terms of the agreement clearly to the influencer, and know that you are assuming a huge risk. If the deal goes sideways for any reason, they have enormous influence to destroy your brand.
- If the deal stays on track, there are still disclosure concerns. Make sure endorsement relationships are properly disclosed with the Federal Trade Commission’s (FTC) guidelines.
- Article 50 – which commences a state’s exit from the EU – was triggered by the UK in March 2017. However, its two year implementation period has been extended indefinitely. Technically, trade mark and other law will not change until this yet-to-be-determined implementation day. Ryan Pixton, partner at Kilburn & Strode, introduced the majority-American attendees to an emerging adage about Brexit: “Nothing is agreed until everything is agreed.” Still, trade mark lawyers around the world need to prepare for the inevitable split.
- One of the main questions is how EU trade marks (EUTMs) will be converted into UK national marks: automatically, or electively. The EU Commission wants automatic conversion, which would not be associated with any fees or additional review.
- Enforcement is another question. Trade mark registrations in the UK and the rest of the EU have been handled by the EU Court of Justice (ECJ). How will UK companies’ marks be treated, especially those with cases currently at the ECJ?
- Ainslee Schreiber, IP attorney at Starwood Hotels, shared her Brexit-preparation measures: “Double up on registering your trade marks in the top countries you do business with, and don’t rely on the promise of the converted registration in the UK.
- Schreiber recommends filing preemptively, and not waiting for trade mark law around Brexit to shake out. If you can’t get a trade mark in the UK, she said, go for a 3D design that incorporates your logo, or register it as a copyright. Of course, time and money are limiting factors, so prioritise core and high yielding marks.
- Use is another consideration. The EU does not require an intent to use, whereas the UK does. Therefore, companies intending to maintain their brand in the UK should establish use there, and keep those methods active and documented throughout Brexit, just in case.