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 The withdrawn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.