Dietary Supplement Businesses Protect Brands Through Trademark Registration

Capture Your IP: Developing and Perfecting Your Know
What Every Dietary Supplement Business Should Invention Disclosure Program

What Every Dietary Supplement
Business Should Know About
Protecting Brands and Managing
Trademark Concerns

PRESENTED BY:

Michael E. Mangelson
Catherine P. Lake
Joshua G. Gigger

Seminar 4 • Tuesday, July 21, 2009
Series 3 • Seminar 4
3 Thursday, May 28, 2009
Tuesday, July 21, 2009

What Every Dietary Supplement Business Should Know

Overview

• What is a trademark?
• Selecting and clearing trademarks.
• Protecting trademarks through registration.
• Protecting trademarks through proper use.
• Protecting trademarks through enforcement.

Series 3 • Seminar 4 Tuesday, July 21, 2009


Branding-Why Trademarks Matter
Branding-



What is a Trademark?

• Any word, name, symbol, or device, or any
combination thereof, used to distinguish goods
and identify the source of goods.



Trademark–Examples

• Words: USANA XANGO SCHIFF

• Designs:

• Word/Design
Combinations:



Trademark–Examples

Packaging:

Color, Sound, Fragrance:



Building Strong Trademarks Involves Three Steps:

1. Select an appropriate mark.
2. Register the mark.
3. Protect the mark through proper use and
enforcement.



Selecting Trademarks

1. Identify a distinctive mark.
2. Clear marks through trademark searches.
3. Do not use marks that are not truthful, that are
misleading, or that have unsubstantiated product
claims.



Selecting Trademarks–Distinctive Marks
Trademarks–

A mark must be distinctive (inherently or acquired through use) to be protectable. For the
strongest legal protection, select distinctive marks without descriptive, surname or
geographic connotations.

Least Most
distinctive distinctive



Selecting Trademarks–Searching and Clearing
Trademarks–
Trademarks



Selecting Trademarks–
Trademarks–
Searching and Clearing Trademarks
• Goal: eliminate marks that are
confusingly similar to or that
dilute third-party marks.
• Factors to analyze:
- similarities of sound,
appearance, and meaning.
- relationship between the marks’
products or services and
channels of trade.
- sophistication of customers.
- strength and fame of marks.



Trademarks–
1. Conduct preliminary “knock-out” screening.
– USPTO database at http://www.uspto.gov (no state,
common law, or foreign records).
– Third-party databases such as SAEGIS and Dialog
(includes federal, state, and some foreign
searching).
– Internet search engines, yellow pages, WHOIS
registries, and state databases.
– Trade/industry directories and telephone books.
2. Engage counsel to search federal and state records,
including registrations, pending and abandoned
applications, and expired and canceled registrations.


Trademarks–

3. Order full “common law” search by commercial search
firm (e.g., Thomson CompuMark).
4. Order international search (if foreign use is anticipated).
5. Obtain counsel to evaluate search reports and provide
opinion regarding risks.
6. Investigate abandoned applications, canceled or
expired registrations, owner of potentially conflicting
mark, and USPTO status information and prosecution
history for applications and registrations to determine
availability of mark in the marketplace.



Trademarks–
7. Avoid unacceptable risks by
– Abandoning mark.
– Purchasing conflicting mark.
– Obtaining consent or license to use conflicting
mark.
– Filing petition to cancel conflicting mark (e.g., if mark
is abandoned).
– Filing federal intent-to-use trademark application.
in advance of use to determine registerability and
possible opposition by a third party.

Salt Lake-308824


Trademarks–
Deceptive Claims
• FDA has primary responsibility for claims on
dietary supplement product labeling, including
packaging, inserts, and other promotional
materials distributed at the point of sale.
• FTC has primary responsibility for claims in
advertising, including print and broadcast ads,
infomercials, catalogs, and similar direct
marketing materials.



Trademarks–
Deceptive Claims

FTC’s Truth-In-Advertising law requires:
1. Truthful and not misleading advertising.
2. Adequate substantiation for all objective product
claims.



Trademarks–
Deceptive Claims
• Ad for a product called “Cold Away”
- Carefully evaluate whether mark expressly or
impliedly makes a health claim.
- Must substantiate that the product helps
prevent colds

COLD

AWAY



Protecting Trademarks Through Registration



What Are the Benefits of Federal Trademark
Registration?



Benefits of Federal
Trademark Registration
• Legal presumption of the registrant’s ownership of the
mark, and the registrant’s exclusive right to use the
mark nationwide.
• Constructive notice to the public of the registrant’s
claim of ownership of the mark.
• Ability to bring an action concerning the mark in federal
court.
• U.S. registration can be used as a basis to obtain
registration in foreign countries.
• Ability to file the U.S. registration with the U.S.
Customs Service to prevent importation of infringing
foreign goods.



Benefits of Federal Trademark Registration–
Help from U.S. Customs

• Register trademarked goods with
U.S. Customs.
– U.S. Customs will monitor ports and seize
counterfeits.
– Provides enhanced penalties: fines and jail
time.
– 2005: $93M in counterfeit goods seized.
– 2008: $272.7M in counterfeit goods seized.
– Online form and $190 filing fee.



The Federal Registration Process

• File an application based on actual or intended use.
• Application must include description of goods.
• Applicant must pay filing fee.
• Application is examined by USPTO.
• Application is published for opposition in the
Official Gazette.
• Registration is valid for 10 years.



Does a Trademark Need to Be
Registered Before It Can Be Protected?



Does a Trademark Need to Be Registered
Before It Can Be Protected?
• Federal registration is not necessary to establish
rights in a trademark.
• “Common law” rights arise from use of a mark.
• Generally, the first to either use a mark in
commerce or file an intent-to-use application with
the USPTO has the ultimate right to use and
registration.
• However, there are many benefits of federal
trademark registration.



Dangers of Failing to Register

Senior
user




Senior
user

Innocent junior
user registers




Senior user’s territory frozen
from time
junior user registered



Marks Not Allowed Registration

• Immoral, scandalous, or deceptive marks.
• U.S., state, or foreign flag.
• Names of living individuals (without
permission).
• Olympic designations.
• Descriptive or misdescriptive marks.
• Marks similar to marks already registered.



Is a Federal Trademark Registration Valid Outside
the United States?



Is a Federal Trademark Registration Valid Outside
the United States?

• No. Certain countries, however, do
recognize a U.S. registration as a basis for
registering the mark in those countries. Many
countries maintain a register of trademarks.
The laws of each country regarding
registration must be consulted.



International Issues

• Federal registration does not give international
protection.
• First to use vs. first to register.
• Paris Convention - a U.S. applicant can claim
date of U.S. application as priority date for
foreign protection if applicant files in foreign
country within six months of U.S. filing date.
• Community trademark registration-27
countries in the European Union.




• Madrid Protocol - allows a U.S. applicant to
seek registration in any of the member
countries by filing one application with the
USPTO and designating as many member
countries as it chooses.



• Be careful how you describe and classify your products in
trademark applications.
• In the U.S., dietary supplement products can be classified with
conventional foods in classes 29, 30, 31 and 32, but class 5 is
the most common classification.
• Some foreign examiners view tablet products, and herbal and
other supplements as medicinal products, and require the
addition of “for medical purposes” to class 5 descriptions.
• May have to protect supplements in classes 29, 30, or 32, or
work with trademark counsel to craft alternative acceptable
descriptions (e.g., dietary supplement “adapted for
medical purposes excluding preparations intended to
diagnose, treat, cure or prevent any disease.”).


Protecting Trademarks Through Proper Use



Trademark Use Guidelines

• Use marks consistently – create brand use guidelines.
• Always use marks as an adjective (e.g., ONE A DAY® vitamins).
• Emphasize the marks (e.g., ONE A DAY® brand vitamins).
• Do not pluralize or make a mark possessive (e.g., BURGER KING® restaurants
or BURGER KING® restaurant’s).
• Use proper trademark notices.
- e.g., use ® if mark is registered, TM for an unregistered mark, and SM for an
unregistered service mark.
- e.g., “ONE A DAY is a trademark or registered trademark of Bayer
Healthcare LLC.”
• Monitor use of trademarks.
• Failure to use properly may result in loss of rights in the mark.



Fighting “Genericide”

ASPIRIN



Additional Ways to Weaken or
Lose Trademark Rights

• Abandonment.
• Assignment without goodwill (assignment in
gross).
• License without quality control (naked
license).
• Failure to police and stop infringement.
• Fraud.



Protecting Marks Through Enforcement



Trademark Protection and Enforcement

• Monitor third-party registration and use.
• Demand letters.
• Opposition and cancellation proceedings.
• Trademark infringement litigation.
• UDRP and ACPA.



Trademark Protection and Enforcement

• Monitor third party registration and use.
• Demand letters.
• Opposition and cancellation proceedings.
• Trademark infringement litigation.
• UDRP and ACPA.



Thank You

Michael E. Mangelson (memangelson@stoel.com)
Catherine Parrish Lake (cplake@stoel.com)
Joshua G. Gigger (jgigger@stoel.com)


Dietary Supplement Businesses Protect Brands Through Trademark Registration

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