Amidst public criticism and pressure from corporate sponsors, many well-known brands are taking a hard look at their trademarks and choosing to move in a new direction. These changes are impacting brands in various industries from sports teams, like the currently unnamed Washington NFL team, to retailers, like Trader Joe’s. While appeasing the call for change, an unfortunate consequence with which these brand owners must deal are trademark trolls.
The basic premise that a generic term is un-registrable is, at first glance, uncontroversial. If a key purpose of a trademark is to identify a particular source of goods or services, then it stands to reason that one cannot obtain a trademark registration for the name of that very category of goods or services. For example, it’s unlikely one could register the mark “Books” for a bookstore, or “Groceries” for a supermarket—doing so would effectively grant the owner a monopoly on the use of those very terms. But what if those ostensibly generic terms were part of a website domain?
Intellectual property rights holders are constantly seeking creative ways to protect their brands, including preventing counterfeit products from entering the marketplace. There are the traditional methods – such as federal trademark registration with the United States Patent and Trademark Office – that are well-known to most companies. However, many companies are less familiar with the high-value, low-cost enforcement tools available through a Customs Recordation filing with United States Customs and Border Protection.
United States Customs and Border Protection (CBP) can be a vital partner in your company’s efforts to enforce its trademarks and copyrights, and to stop counterfeit imports. Intellectual property enforcement is currently a “Priority Trade Issue” for CBP, and the increased focus on such enforcement is highly beneficial to companies who can then leverage CBP’s database and workforce to identify and stop counterfeit product imports. CBP uses the information contained in its database of recorded trademarks and copyrights in order to target and seize imports of counterfeit and pirated goods at various U.S. ports of entry. In FY 2019, CBP seized more than 27,000 shipments containing counterfeit goods, enforcing over 18,500 active recordations1. Notably, CBP rarely takes action to detain or seize goods displaying trademarks or copyrights that are not recorded; therefore, it is critical to include CBP recordation as part of your enforcement strategy.
The global COVID-19 crisis has created dynamic shifts in how businesses source and sell goods and services. Whether those shifts are temporary or will solidify into more permanent structures ushering in a “new normal” era of consumerism, remains to be seen. As I write this, it is the weekend after Memorial Day 2020. Just yesterday, my home state of Virginia commenced phase I of a graduated reopening of the state economy, while last weekend’s headlines focused on widespread defiance of stay-at-home orders and social distancing guidelines as the U.S. death toll climbed towards 100,000 (a milestone it has now passed). It is clear that there are limits to our willingness to stay home, and that bodes well for the survival of some brick-and-mortar retailers. But brick-and-mortar retail and business in general may look significantly different in a post-pandemic world. The companies emerging stronger will likely be those that use this time to rethink who they are, what they do, and how they do it — and the ways in which they convey that message to consumers.
The mechanics of litigation in the federal courts have changed dramatically over the course of the past two months. Intellectual property enforcement is certainly not immune to these changes. Now that stay at home orders have been in effect in many states, enforcing copyright, trademark and other intellectual property rights through litigation involves a different set of considerations. Here are a few of the more significant considerations you can’t afford to ignore:
The functionality doctrine remains strong. In a recent decision, the Trademark Trial and Appeal Board relied on the doctrine of functionality in finding that the product configuration mark at issue was unprotectable under Section 2(e)(5) of the Lanham Act.