Trademarks

TRADEMARKS! TRADEMARKS! HOW TO USE THEM AND HOW TO LOSE THEM

Two recent developments illustrate certain basic trademark principals: brand identification and losing your trademark rights.

The first development is the aborted changes in the National Organic Program (“NOP”) guidelines that were issued this April by the NOP program manager who is an employee of USDA. The withdrawn guidelines, which were issued as “clarifications” of existing NOP regulations would have allowed the use on organic crops of pesticides that may contain prohibited ingredients, identification of fish as organic although no organic standards have been developed for fish, the use or non-organic fish meal in organic livestock feed, and allowed dairy cattle to be treated with drugs without removing them from organic dairy herds. We’re not going to comment on this change as a matter of science (either food or the political kind) or the legal merits of USDA’s action. Rather the controversy illustrates the use of trademarks by NGO’s, particularly trade associations, to police the market place.

The word “organic,” being a generic term cannot be trademarked. But what if years ago the then members of the incipient organic industry had gotten together to set up a standard setting board such as a non-profit corporation which would have defined organic standards and credentialed organic certifiers? What if this board had developed a trademarkable logo (as opposed to the less than eye catching USDA seal) to be used in the labeling and advertising of products that meet the board's organic requirements and communicated the meaning of this logo to the consuming public? Well maybe today such a seal of approval would have as much recognition as among consumers of organic products as other famous trademarks such as IBM®, Coca-Cola® or McDonald’s®.

The creation of private standard setting organizations with significant public recognition is not at all unusual whether it’s Good Housekeeping®, UL®, the mark of Underwriters Laboratory, Realtor®., the mark of the National Association of Realtors, or CFP®, the mark of the Certified Financial Planner Board of Standards, Inc. These organizations use their word and/or design trademarks to identify their members and the persons, organizations or products that comply with their standards. Of course, the advantage of private standard setting is that the organizations determine their own requirements for membership and make their own rules regarding use of their marks. On the other hand, the USDA’s NOP will always be under a cloud of internal or external political pressures.

The second development is a much less philosophical and much less published, especially in FDA/USDA circles. The University of Georgia has discovered that it may no longer own its name. The University of Georgia Foundation, which is estranged from the school’s current leadership, registered the mark University of Georgia® with the U.S. Patent & Trademark Office after the school’s trademark registration was allowed to expire. (Trademark registrations must be renewed every 10 years, and the Trademark Office does not send out renewal notices to registrants.)

We don’t know the circumstances of how the University allowed its registration to lapse. (And, in fact, the University should still have common law rights in its name.) But maybe, someone at the school didn’t respond to a letter from trademark counsel reminding them that the registration needed to be renewed. So, the moral of the story is: if you are a trademark client of Zackler & Associates, and we send you a letter requesting your response, you should expeditiously respond or your brand name may no longer enjoy the protection of the Lanham Act.

 

Registering Domestic & International Trademarks – The Madrid Protocol

The Madrid Protocol is a treaty that represents a new opportunity for U.S. companies to register their trademarks domestically and internationally. As of November 2003, 61 countries joined the Protocol. The Protocol allows you to use a single application to register your marks with the U.S. Patent and Trademark Office (“USPTO”) and other designated member countries such as China, Japan, France, and the United Kingdom.

The Protocol has many benefits when filing in other designated member countries. Applicants file a single application in one language instead of multiple applications in various languages. You will no longer need to hire local attorneys in individual countries or pay for translation fees. Also, the single application is assigned a single renewal date as opposed to separate renewal dates for each country.

Nevertheless, there are some drawbacks to utilizing the Protocol process. First, if an application is rejected or a registration is canceled within five years of the international registration date, the mark owner will have to file multiple national applications within three months to maintain your priority for international protection. Secondly, the simplicity of a single application limits an applicant’s flexibility in defining the range of products or services that the trademark covers because of different regulations or requirements that may exist in different countries. For example, USPTO regulations may limit a description of goods or services on which a mark will be used, but the USPTO limitation may not apply in other countries that belong to the Protocol.

It is strongly recommended that if you are looking to register trademarks both domestically and internationally you evaluate how your registration strategy might be affected by the Protocol. Zackler & Associates will help you evaluate (a) whether you should use the Protocol when registering a mark internationally or if separate national registrations will be in your best interests; (b) whether a mark you are currently using or intend to use might be free of opposition from a non-domestic trademark registrant; (c) completing the necessary paperwork for filing with the USPTO; and (d) responding to issues raised by the USPTO or other trademark owners. We will work with you to ensure that your trademark will be registered in a timely and cost efficient manner.

 

Swedish “Aphrodisiac” Drink Niagra Changes Name

Under legal pressure from Pfizer, the manufacturer of the anti-impotence drug Viagra®, the makers of the Swedish energy drink Niagra have decided to change the name of their product to NEXCITE. The carbonated energy drink, marketed in a suggestively styled blue bottle, was touted by press reports as the “female Viagra.”

Sales of the soft drink took off after the Niagra product was featured on ABC’s Good Morning America. However, Pfizer quickly sued Niagra’s manufacturer and distributor for infringement of Pfizer’s Viagra® mark. Pfizer’s infringement action is still pending in federal district court in Little Rock, Arkansas.

Practice note: Zackler & Associates can review your company’s proposed trademarks for potential risks of infringement.

 

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