BrandJacked Tips

RiechesBaird recently partnered with Latham & Watkins LLP and LCX Digital to deliver a webcast covering the fundamentals of how brands are created and the steps branding professionals and marketers need to take to protect brands from infringement.

Here are some basics. What are the differences among ©, ®, SM, and ™?

  • Original works can be copyrighted (©) – screenplay, book, song
  • Names can be registered (®) – your business name, school name
  • Trademarks (™) – words, logos, symbols, characters, colors, smells, sounds
  • Service Marks (SM) – to protect a service offering versus a product name

Really, a sound can be trademarked? Yeap. Intel’s ‘Inside Intel’ tones are trademarked. And as for colors, most people are familiar with Tiffany & Co. and its trademarked pantone of blue.

The recent webcast covered many infringement examples and even went into “Cybersquatting” or domain name infringement and whether or not purchasing trademarked “key words” in Google AdWords is considered infringement. If you were not able to make the live webcast, view the on-demand webcast here.

Below are some answers to questions that came up during the Brandjacked webcast.*

*Please note that the information provided herein is for information purposes only and should not be construed as legal advice. Should further analysis or explanation of the subject matter be required, please contact the attorney with whom you normally consult.

  1. In regards to SEO efforts, are there any infringement issues when a competing brand tries to capture traffic by purchasing trademarked key words?
  2. Trademark infringement actions have become increasingly frequent where one brand tries to capture search engine traffic by purchasing another company’s trademarked keywords. See, e.g., Rosetta Stone Ltd. v. Google Inc., 730 F. Supp. 2d 531 (E.D. Va. 2010); 1-800 Contacts, Inc. v., Inc., 755 F. Supp. 2d 1151 (D. Utah 2010). These actions have been popularized as “Google AdWords” cases. A plaintiff in a “Google AdWords” case must prove the same elements as in a more traditional infringement case: (1) a protectable ownership interest in the mark; (2) that the defendant used the mark; (3) that the defendant’s use of the mark occurred “in commerce”; (4) that the defendant used the mark in connection with the sale, offering for sale, distribution, or advertising of goods or services; and (5) that the defendant used the mark in a manner likely to confuse consumers as to the source or origin of goods or services. Rosetta Stone Ltd., 730 F. Supp. 2d at 540. Courts have diverged in their holdings as to whether the purchase of “keywords” constitutes infringement. This divergence occurs primarily because the outcome of keyword cases depends upon evidence produced by the parties as to whether there is a “likelihood of confusion,” and is therefore heavily fact-based. This area of law is likely to be more settled following the decision in the Rosetta Stone Ltd. v. Google Inc. appeal, which is scheduled to be decided in 2012. See Rosetta Stone Ltd. v. Google Inc., No. 10-2007 (4th Cir. filed Oct. 25, 2010). However, in the meantime, companies must be careful when purchasing trademarked keywords, as there is a risk that they will be found liable for trademark infringement.

  3. Do you need to register or trademark a slogan?
  4. Registration is not necessary to obtain or maintain trademark protection. In the United States, trademark protection is granted to the first user of a mark in commerce, regardless of whether the mark is registered. Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996). However, registration offers added protection. In particular, registration on the Principal Register, which is available for distinctive marks, confers many benefits. For example, registration gives rise to a rebuttable presumption that the registrant owns the mark and has the exclusive right to use the mark in connection with the goods or services described in the registration. 15 U.S.C. §§ 1057(b), 1115(a). Registration also allows the owner to sue in federal court for profits, damages, treble damages, and attorney’s fees. 15 U.S.C. §§ 1117, 1121. Additionally, if a mark is used continuously for five years after registration, the mark can become incontestable, subject to certain statutory defenses. 15 U.S.C. §§ 1065, 1115(b). This list is not exhaustive and parties considering registration should discuss their specific situation with legal counsel.

  5. When is it necessary to use the ©, ®, ™ or SM symbols when using a brand name or slogan in print? Is it always necessary?
  6. Only owners of marks registered with the United States Patent and Trademark Office (USPTO) may use the ® symbol. 15 U.S.C. § 1111. Under this section, owners of registered marks who do not use the ® symbol or state that the mark is registered with the USPTO cannot recover damages in an infringement action, unless the infringer had actual notice of the mark. The ® symbol may not be used by those who have only filed an application to register the mark or who hold a state registration for the mark. Trademark Manual of Examining Procedure (8th ed. 2011). In contrast, the TM or SM symbols can be used by anyone who claims to have a trademark or service mark, but merely using the symbols does not create trademark rights. In re Volvo Cars of North America Inc., 46 U.S.P.Q.2d 1455 (T.T.A.B. 1998). Still, employing the TM and SM symbols can be helpful because it notifies other potential users of your claimed ownership and informs the public that the mark identifies your goods or services and is not being used in a generic or merely descriptive sense. In re Mine Safety Appliances Co., 66 U.S.P.Q.2d 1694 (T.T.A.B. 2002). In the copyright context, if the work was published after March 1, 1989, use of the © symbol is not required to obtain copyright protection. Garnier v. Andin Int’l, 36 F.3d 1214, 1219 (1st Cir. 1994). Using the © symbol may still be beneficial. If a work bears the © symbol, then an infringer will be unable to claim “innocent infringement,” which could otherwise lead to a reduction of the infringer’s damages, subject to one exception for some non-profit entities. 17 U.S.C. §§ 401, 504(c)(2). However, works published before March 1, 1989, must comply with notice requirements, which differ depending on when the work was published. Parties interested in determining which of these symbols they should use and how they should use them should discuss their specific situation with legal counsel.

For additional questions regarding branding and trademark issues you can contact:

(949) 586-1200

Latham & Watkins
(714) 755-8288

Learn more about the author of this post, .