IP Law Bulletin

Updated August 3, 2020

The coronavirus seems to be exerting itself upon all phases of life, and your intellectual property is not immune.  While you, your families, your friends, and your colleagues are getting comfortable with the new normal of social-distancing, intellectual property (IP) offices worldwide have also been grappling with how to handle the impact of coronavirus (also referred to as COVID-19).  Responses from IP offices around the world are varied and evolving, as the landscape changes in each individual country and on a global scale.  For example, some offices, such as the European Patent Office (EPO), India, and the United Kingdom, have automatically extended deadlines, while others have refrained from any extensions but permit, under certain circumstances, remedial action for rights lost due to effects of the coronavirus.  While the U.S. Patent and Trademark Office (USPTO) has not provided for automatic extensions, certain deadlines associated with patent and trademark filings and fees may be extended for small and micro entities provided the delay in filing or payment was due to the COVID-19 outbreak.  Additionally, the USPTO will waive the petition fee to revive certain lost rights resulting from a failure to take action due to effects of the coronavirus. 

Building upon our recent note concerning general international intellectual property protection considerations, this article describes how foreign IP expansion efforts might play out in a case study format. The company, a hair restoration lotion manufacturer named WonderFlo Tonight, is fictional, but the fact pattern is derived from real world situations encountered by businesses as they seek to establish and protect their intellectual property in foreign markets.

Businesses must balance the desire for intellectual property protection throughout the world with budget management goals. There is no “one size fits all” approach for achieving that balance, but there are certain considerations that all business that hope to operate on the global stage should be aware of and think through.

Global IP portfolio management strategy should be driven by the need to be positioned to take aggressive action in commercially important markets, while at the same time staking out a more defensive position in markets of less immediate commercial importance but that might become more important. IP filings in places known as havens for opportunists who might interfere with your business plans in those places through bad faith filings also might be warranted.

In the case of patents and trademarks, pre-filing diligence in the form of patent “freedom to operate” searches and trademark availability searches should be considered. While blindly filing abroad and simply waiting to see whether issues are encountered at the various registries is an option, the pre-filing searching might uncover details about potentially conflicting third-party rights and allow for strategic adjustments. Turning to considerations specific to categories of IP:

Patents

Patent applications often are filed directly at the national level, but there are numerous regional patent offices that provide regional patent registrations. These include the European Patent Office (EPO), the African Regional Intellectual Property Organization (ARIPO), the African Intellectual Property Organization (OAPI), and the Eurasian Patent Organization (EAPO). Through these organizations inventors can file a single application that will receive protection in the regional “member countries”.

Moreover, under the Paris Convention, an inventor’s patent application filing date can be retained in other countries party to the treaty (most commercially significant countries are included) provided that the foreign patent applications are filed within one year of the U.S. filing date (or six months in the case of design patents).

Whether applying for a patent in a given country or jurisdiction makes sense should be determined by evaluating whether the subject matter is likely to be considered patentable in that country, whether the short-term and long-term legal costs are justified relative to the business value of protection, whether preserving the technology or methodology as a trade secret instead of patenting it makes more sense, and how difficult and costly it is to enforce a patent there.

Trademarks

Trademark protection also requires taking specific action for each country or jurisdiction (e.g., the European Union is one jurisdiction for purposes of registering a trademark). The two types of action are: (1) filing a trademark application directly with that country’s trademark registry through local counsel; or (2) using a home registration as the basis for securing an International Registration through which one designates rights to the various countries of interest. 

The International Registration approach avoids the local counsel service fees associated with direct filings, but usually means doing without pre-filing advice that could improve the chances of a successful outcome. The International Registration approach also entails limitations that are beyond the scope of this article but that will be addressed in a future blog post, including the requirement for U.S. companies that the International Registration mirror the scope of the underlying U.S. registration (which often results in more narrow registration protection than otherwise would be available).

Trademark protection standards vary from country to country. What is required or makes sense in one country might not be the best approach in another. For example, in the U.S. a trademark application must be supported by a declaration under oath that the applicant intends to use the mark in relation to all listed products and services, which usually requires a narrow approach. In certain other countries, however, broader filings are possible and generally recommended because there is no such limitation (although in the future a resulting registration in that other country could be cancelled by a third party on the basis of the mark’s non-use).

Copyrights

Let’s not forget copyrights. Legal protection for copyrights, like patents and trademarks, is territorial, but protecting copyrights generally entails less in the way of formalities. In fact, the U.S. is one of only a few countries that have copyright registration systems. There are international treaties that the U.S. and virtually all other commercially relevant countries have joined, most notably the Berne Convention, that reduced formality requirements and provides that works shall be protected in countries other than the author’s country of origin in the same way that the foreign country protects works of its own authors. 

So, for example, if a German business without authorization were to publish in Germany and profit from a U.S. business’ content authored in the U.S. and protected by U.S. law, a German court would recognize and enforce those U.S. rights as if German rights (not applying U.S. law, but treating the rights as valid rights under German law). The same would apply for works authored in Germany, e.g., which would be recognized as protected under U.S. law if infringed in the U.S.  Certain benefits associated with U.S. copyright registration, however, such as statutory damages, are not automatically afforded to foreign works under that scenario absent registration. 

Copyrighted expressive content often is misused by other organizations with which your business has a relationship and should be managed contractually. While having rights recognized by a foreign country’s courts is desirable, there are inherent challenges and increased costs associated with taking legal action in a foreign country. U.S. companies should make a point of imposing contract provisions upon foreign distributors/partners through which they carefully define limited purposes for which copyrighted content can be used and through which the other organization consents to jurisdiction in the U.S. for lawsuits.

[The considerations highlighted above will be addressed in greater detail in future blog posts.]

Pat Concannon and John Loughnane, partners in Nutter’s Intellectual Property and Corporate and Transactions Departments, respectively, analyzed the significance of the upcoming oral arguments in the Supreme Court case Mission Product Holdings, Inc. v. Tempnology, LLC.

In the Q&A, “Mission Product Holdings, Inc. v. Tempnology, LLC: Will the Supreme Court Clarify the Rights of Trademark Licensees Upon Rejection?,” Pat and John discussed why there is such great uncertainty on this issue, leading to widely different results among the lower courts; how licensees can protect themselves if a licensor files for bankruptcy; and what they predict will happen in the Tempnology case. According to Pat and John, when licensing trademark rights, you need to think about a host of issues at the outset including the impact of a licensor declaring bankruptcy.

View the Insights PDF.

A trademark is a word, phrase, symbol, design, color, sound, or a combination thereof, that serves to identify the source of goods or services from those of another. Questions frequently arise about how trademarks should be used and about when and how trademark symbols should be used.

You don’t need to register a trademark to establish and assert trademark rights in the U.S. Merely using a mark commercially so that consumers come to view the mark as identifying a source is enough to qualify for protection. So, given the prospect of enforceable unregistered rights (known as “common law” rights), why bother with federal trademark registration expense and effort? There are number of good reasons beyond the most obvious one – use of the ® symbol alongside your mark.

Welcome!

The word “brand” has come to be used broadly as a business buzzword, and with good reason. A brand often is comprised of a company name or a product name - but it is much more than that. It is a projection and reflection of goodwill. It is a promise, a feeling, an ethos, a lifestyle statement. It acts as a reassuring signpost for consumers in a busy marketplace, signaling a trusted source and a consistent level of quality. 

Successful brands are not attention-grabbing gimmicks. A product or service name, however clever, merely is a shell, and hopefully that shell is filled with and overflows with positive consumer sentiment that results from a consistently good user experience – whether that experience is eating a taco, using a travel booking website or interacting with an accounting professional. 

This blog post is an introduction to a series of posts that address legal brand protection. Legal measures cannot provide the most fundamental underpinnings for a successful brand, such as quality, consistency, authenticity and good timing in terms of meeting a market demand. Legal measures can, however, position businesses to stake out, defend and protect their brands. Legal brand protection measures include pre-filing and pre-use diligence, registration and policing, and each of these categories involves an array of nuanced considerations that this blog series will address.

Website or information “service providers” who in the past have made hard-copy filings to designate agents to take advantage of the “safe harbor” liability shield provision under the Digital Millennium Copyright Act (DMCA) must re-register electronically by December 31, 2017 to maintain their status.

There are occasions where displaying another company’s trademark is desirable. Whether that type of trademark use is lawful generally is a subjective, fact-specific determination under both United States and European Union law. A recent United Kingdom appeals court decision is instructive.

U.K. Court Ruling

The decision stemmed from a trademark infringement lawsuit brought by BMW against a London auto repair shop. The U.K. appeals court, applying E.U. law, handed BMW a victory. The appeals court, overruling a High Court of Justice decision, held that the shop’s use of the phrase “Technosport - BMW” infringed BMW’s European word mark “BMW.”[1] Not at issue on appeal was the lower court’s finding that Technosport’s use of BMW’s famous “Roundel” logo “would lead the average consumer to believe that [Technosport] was an authorized dealer.” The appeal instead focused on Technosport’s use of the BMW acronym in plain text immediately after its trade name, in particular on the top portion of the back of its service trucks, as shown in the image below.

Technosport had successfully argued before the lower court that its use of “BMW” was merely descriptive of the fact that it had experience servicing BMW cars, and thus non-infringing. 

The appeals court, however, found that “putting BMW immediately after the shop’s name isn’t merely a description of the business’s services.” The appeals court expounded on the distinction between permissible descriptive use and impermissible infringing use under E.U. law through examples: Suggesting or implying “my business provides a service which repairs BMWs” is permissible. In contrast, suggesting or implying “my repairing service is commercially connected with BMW” is not. Once a use crosses the line to suggest a connection with the trademark holder, the use is no longer a non-infringing descriptive use.

The U.K. appeals court ultimately found that Technosport’s use of BMW infringed because it would likely lead the average consumer to believe that the shop has a commercial connection with BMW, despite no evidence of actual consumer confusion. Technosport’s use was therefore not merely “informative.” Indeed, one of the reasons the appeals court overturned the lower court’s finding of non-infringement was the lower court’s undue focus in its decision on the lack of actual evidence of consumer confusion.

How Can One Use Another’s TM in the U.S. without “Crossing the Line?”

While the case above was decided in the United Kingdom under E.U. law, the principle applied is similar to that applied in determining the “fairness” of use of another’s mark in the United States. The concept, labeled “informative use” under E.U. law, is known as “referential use” or “nominative fair use” under U.S. law.

A leading case under U.S. law for determining whether a given use of another’s trademark merely refers to another’s mark in a “fair” way or, instead, crosses the line and suggests affiliation or sponsorship is New Kids on the Block.[2] That decision established a three pronged test for determining if a use is fair, namely:

Nominative fair use is available as a defense to trademark infringement where the defendant uses a trademark to describe the trademark holder’s product or service and (1) the product or service in question is not readily identifiable without use of the trademark, (2) only so much of the mark or marks may be used as is reasonably necessary to identify the product or service, and (3) the defendant does nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.[3]  

Introducing the three prong test, the 9^th Circuit in New Kids affirmed a lower court’s finding that a publisher’s use of the NEW KIDS ON THE BLOCK band trademark was a non-infringing, fair use. The publisher had displayed the mark in conjunction with a phone-in poll (callers were charged a fee to participate) asking readers to chime in with opinions about the group. 

It is important to note that use of another’s logo, as opposed to a plain text mark, is more likely to be deemed to suggest sponsorship or affiliation with the trademark holder under the test.

 *  *  *  *  *

It can be entirely lawful to use another’s mark within marketing materials, for example, in the comparative advertising context, etc. At the end of the day, however, the three prong legal inquiry into whether a use qualifies as fair requires a subjective determination that is best assessed from the perspective of an experienced trademark attorney.

[1] See Bayerische Motoren Weke AG v. Technosport London Ltd. [2017] EWCA Civ 779, No. A3 2016 1801.

[2] New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).

[3] Id. at 308.

The author would like to thank legal intern Liza Hadley for her assistance with this blog entry.

The Supreme Court held in Matal v. Tam that the Lanham Act’s provision forbidding the registration of disparaging trademarks is unconstitutional in violation of the First Amendment. The Court explained that “[s]peech may not be banned on the ground that it expresses ideas that offend.”