Seattle Trademark Lawyer

This is becoming a pet peeve of mine.

Actually, it’s more than a pet peeve. I think it’s a Rule 11 violation: pleading dilution as a cause of action when the mark at issue isn’t even colorably famous.

When the Trademark Dilution Revision Act was enacted, on October 6, 2006, Congress set a high standard for the amount of fame a mark must have before its owner can benefit from the super-trademark protection the dilution statute provides.

It states: “a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” See 15 U.S.C. § 1125(c)(2)(A). In other words, it needs to be a household name.

The statute provides guidance for determining nationwide fame, including: “The duration, extent, and geographic reach of advertising and publicity of the mark”; “The amount, volume, and geographic extent of sales of goods or services offered under the mark”; “The extent of actual recognition of the mark”; and whether the mark is registered on the Principal Register.  Id.

Gone is regional fame. Gone is niche market fame. If the mark isn’t “widely recognized by the general consuming public of the United States,” it’s not a famous mark.

Yet, how often do plaintiffs assert a claim for dilution as a knee-jerk analog to their claim for trademark infringement? In my experience, all too often.

The dilution amendment is now more than five years old. I think it’s high time plaintiffs respect it in their pleading or suffer the consequences for failing to do so.

I don’t think this view is harsh. It’s just what Congress provided.

There’s often good reason to register one’s trademark.

That’s true at the state level, as well as expanding one’s rights nationwide by obtaining a federal registration.

But there’s also a case to be made for not registering a trademark. For one thing, it doesn’t cost anything. And because trademark rights in the United States arise from use, registration isn’t needed to get enforceable rights.

Here are a few strategies trademark owners should consider to maximize their common law (unregistered) rights:

• Choose a protectable trademark. This is both offensive and defensive. The stronger (typically less-descriptive) the mark is, the more you will be able to enforce your rights against confusingly similar uses. And the more unique your mark is, the less likely a third party will claim that you have infringed its prior rights. Not so if you adopt a common or “popular” trademark. (Tips on selecting a protectable trademark here.)
• Use your trademark as a trademark. This isn’t as obvious as it may seem (see post here). To get trademark rights, you need to use your mark as an identifier of source. That means you need to use it on the article or container (if the mark is used to sell goods), or on your Web site or at the point of sale (if the mark is used to sell services). The use should be prominent (i.e., large font, placed front-and-center) and should tell consumers that what’s being sold comes from you.
• Put third parties on notice. Using the ® symbol tells third parties that you have obtained a federal registration. The owner of an unregistered trademark can communicate a similar message — that it claims rights in a trademark — by using the “TM” symbol. The subtext is that competitors and potential competitors should keep their distance, because you will enforce your rights if they adopt a confusingly similar mark.
• Judiciously enforce your rights. You don’t need to go over-board (something trademark bullies don’t understand), but you should not let later-adopters use confusingly similar marks in your market space. The key is the definition of “confusingly similar.” That’s a technical term, but it usually boils down to the similarity in the parties’ marks, the similarity in the parties’ goods or services offered in connection with the marks, and similarity in the parties’ distribution channels. If a competitor adopts a mark that looks and sounds like yours, in connection with the same type of goods or services that you sell, and does so in a way that exposes its brand to the same types of consumers that are exposed to your brand, there’s a significant risk that consumers will mistakenly buy from the later-adopter thinking they’re buying from you. If you allow a likelihood of confusion to exist for a long time (sometimes measured in months rather than years), you risk giving up your trademark rights. That’s not to say you need to sue every trademark owner that comes close to your mark. You’re allowed to pick your battles. But you may not be able to enforce your rights against even a blatant infringer if you unreasonably allow a likelihood of confusion to exist for too long.
• Don’t lose your rights through sloppy licensing. If you license your mark, you need to exercise your right to control the quality of goods or services being licensed. Since trademarks tell consumers that what’s being sold is of consistent quality as other items sold under the mark, your failure to exercise quality control can be deemed a “naked” license and can result in forfeiting your trademark rights. (Discussion of example case here.)
• Strengthen your mark through marketing. A brand owner can convert a technically weak trademark (such as a descriptive mark) into a functionally strong one through length of use, advertising, and sales. Think SEATTLE’S BEST COFFEE. That’s technically a weak mark because it is descriptive. But years of use, lots of money spent on advertising, and lots of coffee sold has converted the mark for practical purposes into a strong, protectable brand. You can do the same if you’re wedded to a descriptive mark.

These ideas apply whether you want to register your mark one day, or whether you’ve decided you’ll never need the benefits of registration. However, this list is by no means exhaustive. I’m curious to know if anyone can think of other tips an owner can use to maximize its rights without registering a trademark.

Who knew I was so trendy?

The NYT today reported on what appears to be a new trend: “lawyers in their mid-20s to early 40s leaving large firms to start their own small ones.”

Sweet!

This isn’t an observation about trademark law, but I have to say, the small law firm platform is a boon. You can lower your rates, bill less, work with startups and small businesses, and really partner with the clients you choose to take on. My new small firm has only been in business for three months. But so far, being small has delivered everything I had hoped.

Now, on to more pressing news: STL is five!!

That’s right. Five years ago this weekend, STL published its first post (here). If I did my math right, this is STL’s 896th entry. 

Thanks for reading all those posts!

As advertised, on Friday Prof. Zhang Guangliang presented his views about “Intellectual Property Enforcement in China — From the Perspective of International Companies” at the King County Bar Association (STL preview here).

His presentation was informative. Here are some highlights — provided by someone who has worked as a professor, practitioner, and chief judge of the Beijing Intermediate People’s Court, which decides many intellectual property disputes:

• China’s First Intermediate People’s Court has 40 intellectual property law judges, and 30 court clerks.
• In 2010, Chinese courts accepted 8,460 new trademark cases in the “first instance” — a 22.5% increase over the volume of cases heard in 2009. Chinese courts heard 1,131 unfair competition cases (which include some types of trademark cases) in the first instance — a 12% increase over 2009. (Chinese courts allow the losing party to re-try the case in the “second instance,” the result of which usually results in the final disposition.)
• The vast number of IP cases involve only Chinese litigants. In 2010, there were only 1,369 IP cases closed that involved a foreign party, which was about the same number as in 2009.
• Chinese courts are authorized to award attorney’s fees to the prevailing party in IP cases. Prof. Guangliang said Chinese rates are less than U.S. rates, but are still expensive.
• Interestingly, an apology from the trademark infringer is a statutory remedy that’s also available.
• Chinese courts do not require the exchange of discovery, but they do allow for the exchange of evidence before trial.
• China is considering amending its trademark statute. Currently, talks are focused on (1) reducing the amount of time to register a new trademark, and (2) strengthening trademark protection, including increasing the amount of money authorized as statutory damages to remedy infringement (currently, the maximum amount is RMB 500,000 (approximately $80,000) to RMB 1,000,000).
• Prof. Guangliang suggested that U.S. companies seeking to enforce their IP rights in China should file their claim in a court that’s experienced in deciding IP cases, such as the First Intermediate People’s Court in Beijing, Shanghai, or Guangzhou. He also suggested finding an experienced IP attorney (rather than a generalist or law professor) who speaks good English.

Those interested in these highlights also may be interested in STL’s summary of the talk China’s chief justice gave earlier this year (post here).

It’s kind of last-minute, but I was just notified about a CLE program that seems great.

On Friday, Prof. Zhang Guangliang of Renmin University of China and visiting scholar at UW School of Law is going to talk about “Intellectual Property Enforcement in China — From the Perspectives of International Companies.”

It’s Friday morning. Registration and coffee service starts at 8:45. Prof. Guangliang will speak for one hour. It’s at the King County Bar Association (1200 Fifth Avenue, Suite 600, in Seattle) and is avialable via live webcast. It offers one CLE credit and is free for KCBA members. RSVP is requested to Denise Medlock, DeniseM@kcba.org.

Prof. Guangliang has an impressive background. He specializes in intellectual property at what’s regarded as the Harvard Law School (or University of Minnesota Law School) of China. From 1994 to 2007, he served as a judge and acting chief judge of the IP Tribunal at Beijing No. 1 Intermediate People’s Court. He’s currently at UWSL as Visiting Scholar. He holds a U.S. LL.M. degree and reportedly speaks excellent English.

This is a great opportunity. I’ve already got a number of questions in mind. If you’re free, bring yours, too!