Tag: trademark

Decisions Facing Trademark Holders In A Post-BREXIT Europe

While the BREXIT decision has been made, much ambiguity remains on the issue of trademark rights holders and their interests that are currently protected by European Union trademarks, commonly referred to as “EUTMs”.

Neither Theresa May’s BREXIT speech in January 2017, nor the UK government’s white paper entitled “United Kingdom’s exit from and new partnership with the European Union” published in February 2017 advise or guide trademark holders as to whether their rights will continue to be protected in the UK or whether trademark holders’ rights vis a vis the UK will simply cease to exist.  However, certain intellectual property organizations such as The Chartered Institute of Trademark Attorneys (CITMA) have offered some ideas as to how this issue may be addressed.  Their suggestions include the following three approaches: (1) the UK plus, (2) The Jersey model, (3) The Montenegro model, (4) The Tuvalu model, (5) Veto, (6) The Republic of Ireland model and (7) Conversion.  The following is a description of how each approach would address the issue post-BREXIT.

(1) The UK plus

EUTM protection would be extended to include the UK, and possibly other European countries who are not currently members of the EU.

(2) The Jersey model,

The UK would deem EUTM registrations to have the same rights in the UK as they do in the EU and UK courts would recognize EUTM registrations as if they were UK registered marks for purposes of enforcement.  However, the UK would not otherwise record these trade marks in the UK Trade Mark Office.

(3) The Montenegro model

All existing EU trade mark registrations would automatically be entered into the UK trade mark register as UK registrations where the marks would have the same description of services, same registration date, and where applicable, the same priority and seniority.

(4) The Tuvalu model

Like The Montenegro model, the existing EU trade mark registrations would be entered onto the UK Intellectual Property Office (“UKIPO”) registry, but only if the EU trade mark holder filed a form requesting the same within a prescribed time frame (to be determined).

(5) Veto

The Veto system would resemble the Montenegro model where holders of EU trade mark registrations could request a mirror-image UK registration, but the UKIPO could then elect to refuse certain registrations that would not have been registrable under the UK laws, had the original application been filed in the UK.

(6) The Republic of Ireland model

Registrations in the EU would be enforceable in the UK until such time as the EU registration renewal deadline, at which time the EU registration holder would be required to create a UK registration that corresponds to its EU registration in addition to filing its EU renewal.  Likely the UK registration would have to be filed within a certain amount of time after the EU renewal.

And

(7) Conversion

All EU registered trade marks would be automatically converted to UK applications, where they would then go through a full examination by the UKIPO as if it was a newly filed UK application.

While it remains to be seen which method will be adopted in 2019 when BREXIT takes effect, likely one of these approaches will become the procedure to follow.  Businesses with sales in Europe and the UK should consider filing a separate trademark application in the UK now, as a precautionary measure. To learn more about how to protect brands in Europe and the UK, please contact:

Natalie A. Remien at:

nremien@lgattorneys.com or (312) 368-0100.

The Truth About Trademark Goods and Services

Many people think if you own a trademark registration with the USPTO, then you can claim trademark rights for that mark in connection with all goods and services under the sun – that the owner of a trademark owns the right to use it however they want.   Conversely, some sophisticated businesspeople believe that they cannot use a particular trademark simply because someone else is using a same or similar trademark.   While that is sometimes true, it is only true if such use would cause confusion amongst consumers in the marketplace.

A somewhat entertaining recent case illustrates this concept.  The owner of a company that sells tackle and other fishing gear and supplies called Land O’Lakes recently sued the well-known dairy company of the same name for trademark infringement alleging that the use of Land O’ Lakes on butter and other products was causing consumer confusion with their use of the trademark in connection with fishing tackle and related products.   The Northern District of Illinois rejected that notion, hook line and sinker (pun intended), stating that it was highly unlikely that anyone would confuse a relatively small tackle company with the large dairy company. See, James G. Hugunin, Land O’ Lakes Outdoors, Inc. et al. v. Land O’Lakes, Inc., Seventh Cir. No. 15-2815, issued March 1, 2016.

While it is not surprising that the court did not find a likelihood of confusion between butter and fishing tackle, it does bring to the light a couple common trademark misconceptions:  (1) I own it for all things and (2) I can successfully stop others from using that trademark for any other good or service, no matter how unrelated.

Clients ask all the time – If I have this “trademarked” (and usually they mean the moment they apply for a trademark registration) then other people cannot use it, right?   Nothing could be farther from the truth.   While unfortunate, the law cannot prevent anyone from doing anything.   At best, though, if you own strong rights in your trademark in your area of goods and services, then if someone uses a similar mark for similar goods or services, you may be successful at stopping them (through an injunction) or otherwise recovering damages (money) from them. A party that has taken the time to protect and use their trademarks correctly is much better suited to enforce their rights against others.

If you have any questions in this area, please contact:

Natalie A. Remein at:

nremien@lgattorneys.com or 312-368-0100.

Essential Legal Matters: What Foodservice Operators Must Know

As any foodservice operator knows, the food business is changing daily.  Margins are thin, competition is fierce and fickle consumer demand and constantly changing dietary fads create increased daily pressure on operators. There numerous legal issues you should consider to give you a leg up. 

Type of Business Entity 

While many food service companies may operate as sole proprietorships, it is always better to operate under the umbrella of a legal entity that will protect you as the owner from personal liability.  This is particularly so in the food service industry where you are feeding people (or distributing to those who do) and interacting with a multitude of guests and employees.  Typically, a corporation or limited liability company (LLC) is the way to go.  And if you open in more than one location or operate separate food service businesses, you would be well advised to set up a separate corporation of LLC for each operation; this way only one entity’s assets will be at risk in the event of a lawsuit.

Intellectual Property Rights

Nearly every food service business creates intellectual property, and these assets can be very valuable in the highly competitive foodservice industry, particularly when your business becomes successful.

One of the most commonly used methods of protecting your food service business intellectual property rights is obtaining trademark protection for any distinctive marks, emblems or symbols or form of words.  The protected mark must be something that distinguishes your business from others and be distinctive, i.e., not something generic like “great food.”  In order to obtain the right to use a trademark, an application must be filed with the United States Patent & Trademark Office.  Most businesses retain an attorney to file the application.

Another form of intellectual property common in the foodservice sector are copyrights.  The purpose of a copyright is to protect creative work and to grant authors the exclusive privilege to produce, create or display the work.  It may be possible to copyright a book containing recipes and sometimes even certain recipes themselves or the method or technique of preparation of food products.

Local Regulations

In addition to organizing a business entity and protecting intellectual property, food service operators need to obtain all appropriate permits and licenses.  The permitting and licensing process varies widely from state to state and even city to city and county to county.  Often local government offices can be a great resource for determining what type of licensing and permitting you will need for your business.  In addition, you will likely need additional licensing if you serve or distribute alcohol.  Your business may also be subject to food and safety health inspections.

Conclusion

With the foregoing in mind and, facing the legal side of the foodservice industry does not have to be a daunting task.

If you have any questions in this area, please contact:

Jonathan M. Weis at:

jweis@lgattorneys.com or 312-368-0100.

Natalie A. Remien Joins Levin Ginsburg’s Intellectual Property and Corporate Practice Groups as Partner

Levin Ginsburg is pleased to announce that Natalie A. Remien has joined the firm as a Partner in its Intellectual Property and Corporate practice groups.

Natalie is an accomplished IP attorney with over 16 years of experience in Intellectual Property law.  Her practice includes handling matters in all aspects of intellectual property including trademark protection, licensing, domestic and international enforcement, and management of global trademark portfolios.  Ms. Remien regularly reviews advertising and packaging materials for clients to reduce risk of exposure due to false advertising, overbroad claims, and misuse of trademarks or copyrights.  Additionally, her practice includes domain name disputes, copyright protection and enforcement.

While companies often request Natalie for her understanding of intellectual property issues, they quickly learn that she also has a keen mind for spotting and resolving corporate and employment issues.  Natalie’s practice includes corporate counseling and review, negotiation and drafting of independent contractor agreements, work-for-hire agreements, employment agreements including non-compete and non-solicitation agreements, offer letters and termination and severance agreements.

Natalie has worked with clients in a broad cross section of industries including toys, games, athletics and fitness, nutrition, luxury goods, multinational retailing, food and beverages, automotive goods and services and insurance and financial services.

Natalie holds a Bachelor of Science in Business Administration from the University of Colorado, Boulder, with a dual emphasis in Finance and Marketing, and a Juris Doctorate from DePaul University College of Law.  Additionally, Natalie is certified in mediation from the Northwestern University College of Continuing Education.

Natalie is a champion for women in business and takes an active role in various women’s business organizations that foster the development and growth of women and minority-owned businesses.  In her free time, she enjoys learning about health and nutrition, and garnering skills that help inspire those around her to reach their true potential.

A Guide to Proper Trademark Use

A GUIDE TO PROPER TRADEMARK USE

The proper use of trademarks is vital in order to establish and maintain your invaluable trademark rights. Proper use preserves a mark’s ability to identify the origin of products or services, and minimizes the likelihood that the mark will become generic or be abandoned.

The following guidelines for proper trademark use apply equally to advertisements, promotional material, displays, packaging, product labels, signs, web sites and other media containing, discussing, or describing, marks.

 GIVE NOTICE OF YOUR TRADEMARK RIGHTS

Providing public notice of trademark rights is important for registered and unregistered marks alike.

The appropriate symbol should be used in connection with all uses of the mark. Typically, proper notice should be adjacent to the mark, usually appearing above or below, and to the right of, the mark. When a mark is used throughout a document, the appropriate trademark symbol should be used at least in connection with the first use of a mark.

Trademark Notices in Registered Marks:

The appropriate form of notice to employ when the mark is registered with the United States Patent & Trademark Office (“PTO”) is as follows:

•           Use the symbol, “®”;

•           Use the legend, “Registered, U.S. Patent and Trademark Office”; or

•           Use the abbreviation, “Reg. U.S. Pat. & Tm. Off.”

Failure to use proper trademark notices each time a federally registered mark is used may hinder the prosecution of a trademark infringement action by allowing the wrongdoer to claim “innocent infringement” as a defense. If proper notice is not used and displayed prominently the infringer may claim ignorance of trademark rights, and damages available to the trademark owner may be reduced.

Trademark Notices in Unregistered Marks:

Providing notice of unregistered marks is highly recommended, but not required by law. Such notice enhances a mark’s source-identifying function and puts third parties on notice of your trademark rights. Again, placement of the notice should be adjacent the mark, usually appearing above or below, and to the right of, the mark in which rights are asserted. Notice of rights in an unregistered mark, consist of the following notations:

•           TM for an unregistered trademark; and

•           SM for an unregistered service mark.

TRADEMARKS ARE ADJECTIVES – NOT NOUNS OR VERBS

Trademarks and service marks are adjectives, and should be used only as such. Marks should never be used as nouns or verbs. Additionally, marks should not be pluralized, nor used in the possessive form, unless of course, it is part of the mark (e.g. McDonald’s). Use of a mark as a noun or verb, over time, can result in genericness, or a finding of unintentional abandonment – even when such improper use emanates from the public, rather than a trademark owner.

One way to ensure that a mark is used in proper form is to follow each use with the generic noun for the product identified. Using the word “brand” after a mark, and before the generic product name, further guards against improper use.

TRADEMARKS SHOULD BE USED CONSISTENTLY AND DISTINCTIVELY

In order to preserve invaluable trademark rights it is important to use the mark consistently in the same way.  Further, the mark should be set apart from surrounding text. The following are helpful tips to insure your marks are used properly:

•           Do not modify your mark.

•           Do not abbreviate the mark.

•           Consistently use the mark in the same font and style.

•           If color is a feature of the mark, use colors consistently.

•           Do not combine the mark with names or marks of others.

•           Do not use mark in combination with other words, symbols or logos.

•           When possible, set your mark apart from text.

•           When a mark is used in text, the marks should be used in ways that distinguish them from surrounding text.

The use of trademark notices, generic terms, and “brand” in connection with marks, helps differentiate marks from generic terms. However, marks also should be CAPITALIZED, underlined, italicized, placed in “quotation marks,” or depicted in boldface type, whenever they appear in printed or electronic media.

AFFIX YOUR MARK TO GOODS AND SERVICES

Not all product names, business slogans, and advertising phrases are trademarks and service marks. In order for trademark rights to be created and maintained, a mark must be affixed to a specific product, or used in connection with the provision of a particular service.

Trademarks are “affixed” by applying them directly to a product, to packaging for the product, or to tags or labels attached to the product or point of purchase displays. Use of a mark on a website or catalog adjacent to a picture of the goods along with a means to order the goods constitutes proper trademark use. Service marks are “affixed” by using them in signs, promotional materials, websites and/or other advertisements offering the services. As a general rule, a mark is not a mark until it has been affixed!

To learn more about trademark use or discuss any issues relating to the protection of your intellectual property, please contact:

Cynthia B. Stevens at:

(312) 368-0100 / cstevens@lgattorneys.com

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