The hidden complexity of trademarks

Registered Trademark
Registered Trademark

Trademarks help protect providers of products and services from unfair competition. An example of unfair competition is when company “A” sells a product or service, and business competitor “B” sells a competing product or service in such a manner as to confuse company “A” customers into accidentally buying from company “B”.

Three general principles of trademark law can be summed up as “don’t try to claim the normal marks (names) of a product or service”, “a trademark only has meaning in the context of a particular class of product or service”, and “use it or lose it”.

Marks that too closely resemble the normal name or logo of a product or service will be rejected as being “generic“. By contrast, marks or names that are “fanciful”, — that have no obvious correlation to a product or service, will often be accepted.  Marks or names falling in between these two extremes, which may be “descriptive” of the underlying product or service, often will be put on probation in a “secondary register” for 5 years. After 5 years of use in trade, absent objection by outsiders, the descriptive name can then be granted full trademark status on the “primary register“.

Note that the word “Trademark” has the word “trade”. This begs the question, trade in what? Under both US and international law, products and services are shoehorned into a limited number of different classes. Although recycling the same names within a class is generally not tolerated, the same names can often be reused for alternate products or services between classes, so long as there is no confusion. The USPTO generally examines the submissions on a per-class basis.

Trademarks are granted on a “use it or lose it” basis. Although it is possible to reserve some names for up to a few years on an “intent to use” basis, ultimately to get the trademark, you need to provide proof that the mark is actually being used in commerce by submitting a “specimen”. This is often a photograph of sales receipts, website purchase pages, and the like, showing that the trademark name is actually being used in real trade.

There are many other complexities of trademark law as well. Searches can be tricky, because the underlying legal standard for trademark infringement is “possibility of confusion”, and not “the same spelling“. Unregistered common law trademarks are another potential problem. Thus merely avoiding other trademarks with identical spelling is often not enough. Alternative spellings, word prefixes, word suffixes, and other name variations can often cause problems if potential customers might be confused.

Amazon and IP disputes

Amazon IP - Amazon acting like its own court
The court of Amazon

Amazon.com is enough of an 800-pound-gorilla that its IP policies can impact trademark, copyright, and patent strategy. Amazon is not kind to descriptive (supplemental register) trademarks.

Amazon.com markets products from millions of manufacturers and vendors, resulting in a large number of IP (trademark, copyright, and patent) disputes.

Unfortunately, the US court system is designed to administer slow, careful (and thus expensive) justice to a small number of IP litigants. It can’t scale to Amazon volumes. So Amazon decided to make its own IP dispute process.

Trademarks:

The Amazon Band Registry offers a number of methods to help trademark owners protect their rights and promote their products. However, at least for the US, just any trademark won’t work. The Amazon Brand Registry is presently only available for USPTO trademarks on the principal register. USPTO supplemental registry trademarks are out of luck.

The USPTO supplemental register is where otherwise OK, but “descriptive” trademarks are put to “age” for 5 years until the mark is considered to have “acquired distinctiveness”. So, the moral is that if you are planning to sell on Amazon, it is good to avoid the supplemental register. This can be done by registering a less descriptive product name.  There are trade-offs here, however, since descriptive names help customers understand the purpose of new products.

Copyrights:

Be careful about the text and images that you upload. It should either be your own material, or material that you have clear rights to (e.g. license, resale of previously purchased physical items). Amazon operates a Digital Millennium Copyright (DMCA) infringement reporting system that you (and others) can use to report issues. If you hold copyrights that you feel are important, consider registering them with the US copyright office, as this can make enforcement easier. Note, however, that under their terms of service, Amazon acquires a license to use your uploaded material.

Patents:

Amazon has recently announced a pilot patent dispute program.  The process is fast and (for patent law) inexpensive. The plaintiff provides the US patent number and the Amazon listing of the allegedly infringing product. Both parties can argue this (e.g. one submits written arguments for infringement, and the other submits written arguments in defense).  Both can pay $4,000 to submit their arguments to an Amazon selected neutral patent evaluator. The neutral evaluator evaluates the patent and product in question.

The winner gets their $4,000 fee back. The loser loses its fee. If the allegedly infringing product loses, Amazon will take down the listing. The neutral evaluator’s decisions are apparently final, but you can still go to the court system if you want.

Disclaimer: I have no affiliation with Amazon. Amazon IP policy can change at any time. However, Amazon is enough of an 800-pound-gorilla that their IP policies are having an impact on the IP ecosystem.

Trade Dress IP

Trade dress
Tux in Trade Dress?

Trade dress is a trademark type of IP covering the artistic context in which products or services, including digital services (websites), are presented to customers.

As legally defined in the US, trade dress is a trademark type of IP that covers the designation of origin (who made it) connected with goods or services used in commerce.  It is focused on the overall artistic context (e.g. artistic impression as a whole). It can cover distinctive containers (packaging) for goods. It can also cover store or restaurant decor, website designs, and other miscellaneous “look and design” issues. The designation can be “any word, term, name, symbol, or device”. These latter two terms are pretty expansive and can include colors, shapes, and sounds.

Like all trademarks, trade dress can’t be functional, and instead only covers distinctive artistic elements. This is due to social policy considerations. Trademarks can potentially last forever.  However, in earlier centuries, it was found that locking up “function” forever causes monopolies that can hurt the economy. Thus functional IP falls under patent law instead.  Patents have far stricter examination criteria and only a 20-year lifetime.

Trade dress examples include the shape of Coke bottles, the brown color of UPS trucks, McDonald’s golden arches, the layout of Apple’s retail stores, and even Homer Simpson’s D’OH sound!

The US legal system is still working to define the extent to which websites and other digital items fall under trade dress law.  Courts may rule differently depending on the jurisdiction. The Federal 9th circuit, for example, determined in 2016 that the visual layout of digital reports can be covered, so long as the visual layout is not functional.  This is present law in California and other western states.

Thus, for example, it is not a good idea to try to copy the distinctive layout of the Facebook website, at least in the social network space. You may think you are avoiding copyright infringement by using different text and images. You may think you are avoiding patent infringement by using different technical methods.  But copy the trade dress, and you may still end up in trouble. Indeed, Facebook has a history of litigation in this area! The same advice applies with respect to other distinctive websites as well.

Like all trademarks, trade dress IP rights may also exist under state law and common law. Thus, the absence of Federal trademark registration is not an automatic “all clear” signal. Hidden problems may still exist.

As a rule of thumb, try to avoid copying the look and feel of a competitor’s website, or other digital output, too closely. If your competitor’s website has some distinctive visual or sound elements, consider making a different choice.

On the other hand, perhaps you have achieved a unique look, feel, or design for your website, service, or product packaging. One that you think customers will like and start to associate with you. If so, consider filing a trade dress trademark application for your particular class of goods or services.

Trademark specimens

Advertising does not work for most trademark specimens
Mere “advertisements” will be rejected!

Trademark “specimens” are required to prove “use in commerce”. Some website screenshots can work, but the recent In Re: Siny ruling shows that others may be rejected as “mere advertisements”.

Trademarks are very much a “use it” or “lose it” type of intellectual property. The US requires that before any trademark can issue, the owner must submit a “trademark specimen” showing that the mark is actually being used in commerce. These trademark specimens usually contain a JPEG (image) file with one or more examples of use in commerce.

Advertising doesn’t work: It is possible to just advertise something without actually selling it.  Thus “mere advertising” is not considered adequate proof. (For a funny example, look up “VIP“.)

Most trademark law predates the internet. However these days, much commerce is internet based “e-commerce.” Using webpages for proof can sometimes be problematic.  Webpages can be ambiguous.  Is the webpage for just advertising, e-commerce, both, neither? The old pre-internet rules are not always on point. So how does the USPTO decide what is and is not OK here?

The Federal Circuit, in the April 2019 In Re: Siny Corp. ruling, has clarified the situation somewhat. In this case, the Siny corporation filed for a trademark application. Their specimen was an image of a webpage. This webpage showed their product, along with a sales phone number and email address. So is this only advertising (reject), or mixed advertising and e-commerce (OK)?

The USPTO trademark examiner decided that this was “mere advertising”, and rejected the specimen. The examiner argued that just providing sales contact information, without more, wasn’t enough. His position was that additional sales information, such as “minimum quantity, cost, payment options or shipping information” was also needed.

Siny appealed to an intermediate USPTO PTAB board. The USPTO PTAB board agreed with the examiner. They further ruled that an adequate website specimen should show a website that functioned like a pre-internet “point of sale” display. Specifically, the website should give “enough” information to make a “purchasing decision”. They argued that the Siny specimen was deficient because: “if virtually all important aspects of the transaction must be determined from information extraneous to the web page, then the web page is not a point of sale.”

What is “enough” here? The PTAB board used the examiner’s list of at least some of: “minimum quantity, cost, payment options or shipping information”. Siny had none of these.

Siny appealed again, this time to the Federal Circuit. The Federal Circuit was pretty cautious. They gave the usual disclaimers that “this is a factual question which must be determined on a case by case basis”, with no “rigid” “bright-line” rules. However, they also decided that they “cannot say that the PTAB board acted improperly”.  And this is what we have for legal guidance at present!

Take home lesson: If using webpage-based specimens, try to incorporate as many elements from the “minimum quantity, cost, payment options or shipping information” list as possible. Add still more elements if available. Not all elements may be needed, but better safe than sorry.

Nice Trademark Classes

Trademark nice classes are like swim lanes for goods and services
Trademark classes are like swim lanes

Welcome to the International Nice Trademark Class system, where we attempt to fit all types of goods and services into only 45 different classes. The results can be a bit strange!

As previously discussed, trademarks help protect the public from accidentally purchasing inferior products from unscrupulous business. Trademarks also help protect legitimate business from inferior knockoffs as well.

As economic growth and international trade expanded, trademark law encountered problems.  There were more products and services than there were good trademark names. Legal mechanisms needed to be created to allow similar trademarks to co-exist.  But this could only be in cases where the products and services were so different that customers would not be confused.

The trademark classification system evolved to allow at least some recycling of similar trademark names. But this is only allowed between very different types of products and services. The underlying concept is somewhat similar to the idea of “area codes” and “swim lanes”.  Think of all economic activity as being a “swimming pool”. The trademark classes divide up this swimming pool into a series of defined “swim lanes”. Any given area of economic activity thus has its own designated “swim lane” (trademark class).

The Nice classification system

Originally, every country defined its own country-specific trademark classes (swim lanes).  This created a lot of international trade confusion. To standardize this process, various countries met in Nice France in 1957. They adopted an earlier (1935 era) proposal and established a standardized list of 34 different trademark classes. This was originally just for trademarked goods. Later, 11 additional trademark service classes were also added. This brings us up to the present total of 45 goods and services. So at present, the trademark swimming pool (“all of commerce”) has 45 swim lanes. This is called the “Nice Classification”.

As might be expected from a 1935-era based classification system, it is a bit dated. Products in general use before 1935 tend to get more than their fair share of different trademark classes. More modern products and services tend to get crammed into a relatively small number of trademark classes. But this is the internationally standardized trademark law system we have, get used to it.

Why do we care?

Nice trademark classes are important when registering new trademarks. They are also important when trying to see if there are conflicts between trademarks. As a rule of thumb, if two similar trademarks describe products or services that fall into different Nice classes, then this is usually OK.  Trademark law will tend to assume that customers will not be confused.  But if two similar trademarks describe products or services that fall into the same Nice class, things may not be OK. There may be a possibility of confusion.

So, if you are filing a new trademark, it is important to specify what types of goods and services you are selling or planning to sell.  This allows the attorney to determine the Nice class for the goods and services.  A proposed trademark that may be totally fine for some Nice classes could be a total non-starter for other Nice classes.

Confusingly Similar Trademarks

Confusingly similar trademarks
Confused snail

If a proposed trademark looks or sounds too similar to another mark, and the proposed trademark is in a related area of commerce, it can be rejected as being confusingly similar.

Trademark applicants often think that if their proposed trademark is not identical to an existing mark, then it will be approved. This is not the case.

The law, in general, is all about human mental states and intentions. Trademark law is no exception. Here trademark law acts to protect us (as consumers) from accidentally purchasing the wrong thing. Trademark law also protects us (as sellers) from having unscrupulous competitors mislead our customers. For trademarks, a key issue is: would trademark “A” confuse the customers of trademark “B”?

For complicated “confusingly similar” cases, the courts can consider up to 13 distinct “Dupont factors”  (from In re E. I. du Pont de Nemours & Co. 476 F.2d 1357, 177 USPQ 563, 1973).  However, we can simplify. For most cases, the two biggest issues are Dupont factors 1 and 2:

Dupont factor 1:The similarity or dissimilarity of the marks in their entireties (to a human, who may not be paying careful attention) as to appearance, sound, connotation and commercial impression.

If a trademark examiner, judge or jury considers all of the elements of the marks and thinks that the marks are similar, this is bad. If there is actual real-world evidence that customers are being confused, this is also bad. There is some good news, however.  If similar-looking trademarks are for very different products or services, then the chance of confusion is much less. So this can be a way to escape this problem.

For example, back in the day, a customer looking to purchase music might not be confused by similarly named computer products. So originally, trademarks for Apple records and Apple computers could coexist. (Now not so much, and deals had to be made — which is OK under Dupont factor 10.) This brings us to:

Dupont factor 2:The similarity or dissimilarity of and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.” (Here there are various trademark classes, and products and services in different trademark classes are usually considered to be dissimilar.)

USPTO trademark examiners will often just initially consider factors 1 and 2. However, if you get a “confusingly similar” rejection, or someone else raises this issue, it is time to start considering the other Dupont factors.

In defense, arguments might be made that the suppliers use different trade channels (factor 3); that the buyers are sophisticated buyers that are not easily confused (factor 4); or that multiple suppliers use a similar type of mark to sell similar goods or services (factor 6).

Another good option to consider is revisiting factor 2. See if you can narrow the scope of goods or services covered by your mark. If so, perhaps you can avoid overlapping with the goods and services covered by the other mark.