By Jacob Pennington, Hg Senior Analyst
Having spent ten years as an intellectual property investigator (IP), I have had the pleasure of researching trademark use on a global scale for some of the most recognized brands and companies in world. When it comes to trademark investigations, there’s one word that sticks out to me the most, USE. Identifying first use, last use, and/or continuous use is the single most important factor in determining trademark rights.
Many people outside of the industry incorrectly believe that an entity or individual has rights to use a trademark merely because they have registered or applied for the mark before anyone else…I’m here to tell you that that’s simply not the case.
In this 3-part blog series, I will breakdown why USE dates are so important in the trademark industry, identify the different types of trademarks, highlight one of the most important tools that our Hg Senior Analysts use for trademark investigations, and provide a few fun facts about intellectual property. Did you know you can trademark a sound?
Identifying Use in Commerce
It is not uncommon in the trademark industry for brands, companies, and/or individuals to register a mark with the USPTO and then receive a cease-and-desist from another, lesser-known entity. How does this happen? Which entity owns the rights to use the mark? Are there limitations or restrictions on how and where I can use the mark? These are just a few of the many questions that IP investigators are tasked with solving. I could do an entire series on the multi-million-dollar blunders that have been created by an entity’s own careless due diligence.
Let’s pretend it’s January 1, 2020, your trademark application has been approved by the USPTO, and your attorney has given the green light that it’s ok to launch your new line of outdoor survival gear, called TACTICAL BOX, on a national scale—including ads, point-of-sale marketing materials, product labels, etc.. Less than a week after the products hit store shelves, your company receives a cease-and-desist letter from Tactical Box, LLC, an outdoors store in North Carolina. Tactical Box, LLC is claiming they own the rights to TACTICAL BOX for use on and in connection with survival gear, including but not limited to pre-packaged foods, backpacks, knives, medical kits, shirts, pants, hats, shoes, etc. So now what? This is where an IP investigator can prove invaluable in protecting your trademark and/or brand.
It is likely that the attorney overlooked Tactical Box, LLC because the business has zero online presence (no website or social media), and its sales and distribution channels are limited to select regions of North Carolina and South Carolina. This is both good news and bad news for the company…
The good news is that the TACTICAL BOX mark is eligible for use everywhere outside of the areas where Tactical Box, LLC’s products are sold and distributed. Because Tactical Box, LLC never bothered to register TACTICAL BOX with the USPTO, it has no claims to the mark outside of the Carolinas. The bad news is that it will cost the company that registered the TACTICAL BOX mark a significant amount of time and money to pull its products and marketing materials from stores in North Carolina and South Carolina.
This error could have been avoided if the company applying to register the TACTICAL BOX mark had hired an IP investigator prior to launch. Through proprietary business and data searches, an IP investigator could have alerted their client (the registrant) that Tactical Box, LLC has been registered with the NC Secretary of State since 2008 and noted that the business applied for a sign permit in their county the same year. Having this information, the registrant might have decided to use a different name for its new product, or it could have even considered approaching Tactical Box, LLC about acquiring the common law rights to TACTICAL BOX mark. Maybe the company decides to make Tactical Box, LLC an offer to buy the entire business.
While this article focused on trademarks consisting of words and/or designs, it is important to note that non-traditional trademarks incorporating sounds, colors, motions, and shapes are becoming more and more common.
Famous trademarked sounds include ESPN’s “DaDaDa-DaDaDa”, Homer Simpson’s “D’OH”, America Online’s “You’ve Got Mail”, and even Darth Vader’s breathing. Other well-known, non-traditional marks include the color of Post-it Notes and UPS’s brown truck, the shape of a Hershey chocolate bar, a Lamborghini’s butterfly doors, and many more.
Be sure to check back next week, when I’ll be discussing types of trademarks.
Are you an analyst or investigator looking for advanced #OSINT training ? If so, check out Hg’s webinar series, where you can attend live sessions and receive CEUs or watch previously recorded sessions to beef up your investigative skills.
Are you or a client in need of trademark intelligence? As veteran investigators in trademark intelligence and investigations, Hg understands the business world and the legal and regulatory frameworks in which corporations and privately held companies operate. Our skilled trademark analysts excel at providing the research and analysis required for successful clearance, assertion, and defense of valuable trademark property. Learn how our team can arm you with the data you need.
Jake is a Senior Analyst at Hetherington Group, where he works with clients in a variety of industries, helping to protect their brands on a daily basis. He brings ten years of experience in trademark infringement investigations to Hg. His intelligence reporting and analysis assist attorneys and their clients in clearing the landscape for new brand identities, asserting territorial ownership, and defending trademarks against unauthorized third party infringement.