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					TRADEMARK HANDBOOK

PREPARED BY:

Office of General Counsel The California State University
NOVEMBER, 1999

TRADEMARK HANDBOOK

I. II.

INTRODUCTION..................................................................................................1 WHAT IS A TRADEMARK?...............................................................................1

III.

TRADEMARK PROTECTION ...........................................................................3 A. B. FEDERAL REGISTRATION ..................................................................4 STATE REGISTRATION ........................................................................5

IV.

LICENSING THE TRADEMARK TO OTHERS..............................................6

V.

PROPER APPLICANT FOR A UNIVERSITY TRADEMARK ......................7

VI.

REGISTERING TRADEMARKS .......................................................................8 A. B. C. D. WHAT TO REGISTER ............................................................................8 THE REGISTRATION FORMS..............................................................8 MAINTAINING CSU TRADEMARK FILES ........................................9 SAMPLE APPLICATION FORMS ......................................................11

VII.

CONCLUSION ....................................................................................................11

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I.

INTRODUCTION

California Education Code section 89005.5 provides that the name of the California State University belongs to the institution and cannot be appropriated by others:

The name "California State University" is the property of the state. No person shall, without the permission of the Trustees of the California State University, use this name, or any abbreviation of it . . . .

Notwithstanding this statute, the CSU name has from time to time been used without proper authority, which creates confusion and can result in complicated legal battles. Moreover, there are certain other institutional identities, which also have considerable value and help identify the CSU to the public -- e.g., campus names, nicknames, mascots, internet domain names -- which are not necessarily protected under the statute. This handbook is intended to provide some basic information for campuses as to the additional protection available under the trademark registration laws, the circumstances under which a campus may want to consider a trademark registration, and how to go about completing it.

II.

WHAT IS A TRADEMARK?

Any name, word or combination of words may be a trademark, if used to identify goods to the public. A service mark is similar to a trademark but it is used to identify services rather than goods. Examples in the CSU context include: abbreviated campus names (San Jose State, Cal Poly, SDSU), mascot names (CSUMB otters, Fresno bulldogs), internet domain names (calstate.edu, csun.edu), and so on.

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To be accepted for registration, a trademark must be distinctive, or clearly recognizable as a trademark. Otherwise it does not serve its identification function for the consuming public. Trademarks that are the most distinctive, or even fanciful will receive the greatest degree of protection under trademark law, because they are more likely to be enforced vigorously by the courts. By contrast, generic terms can receive no trademark protection at all.

Trademark applications are classified as:

(1)

arbitrary or fanciful (e.g., APPLE Computer, AMAZON.COM, XEROX, CLOROX, or KODAK);

(2) (3) (4)

suggestive (e.g. UNCOLA for 7-UP, or CONTACT for self-adhesive shelf paper); descriptive (e.g., RAISIN-BRAN breakfast cereal, CAPSTICK for lip balm), or generic (e.g. ASPIRIN, “shoes,” “car,” etc.).

Arbitrary, fanciful and suggestive trademarks can consist of almost any combination of words, numbers, letters, colors, color combinations, musical notes, sounds, or smells. Slogans (e.g., “Stanislaus Warriors”) may qualify, as well as unique symbols (e.g., the CSU Monterey Bay seal).

A descriptive trademark identifies a characteristic, quality, purpose or some other aspect of a product or service. It does not automatically qualify for trademark protection, unless it can be shown that the public has associated it with a single source, and that it has been continuously and exclusively used by the applicant to identify its services or products for at least five years. The name "California State University" would probably qualify as a “descriptive.”

A term that is merely “generic” can never be registered as a trademark. This includes common group or class names such as “university,” “California,” and words of geographic
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location such as “Sacramento,” “San Francisco,” and so on. However, if generic terms are incorporated with other terms, they may create a unique mark that can be registered (e.g., “San Diego State Aztecs,” “Cal State Fullerton Titans“).

The law of trademark regulates the use of these names and provides a legal remedy if they are misused.1 Even if trademark rights exist, they may be acquired by others, and compromised or lost to the CSU if the mark is not enforced and protected from unauthorized use by others. Trademark rights may also be lost by abandonment if the mark is not continuously used.

III.

TRADEMARK PROTECTION

Trademarks do not have to be registered to be enforced. Unregistered trademarks may be identified by the symbol TM, and are also protected under the law. It is not the registration which creates the trademark. But enforcement of an unregistered trademark can be difficult and expensive. It must be proved that: (1) the mark is inherently distinctive and the owner was the first to use it to identify its services or goods; and (2) the public will be deceived if another person uses the same mark to identify their goods or services. This showing is not required in the case of a registered trademark, where additional remedies are also available, including the recovery of attorneys' fees.

There are two types of trademark registrations -- federal and state. The federal registration is through the U.S. Patent and Trademark Office (the “PTO”). It offers the most comprehensive protection which is effective nationwide. The state registration is through the California Secretary of State.

1Unfortunately, the legal remedy provided under Education Code section 89005.5 is criminal.

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A.

FEDERAL REGISTRATION. There are significant advantages to

having a trademark properly registered with the U.S. Patent and Trademark Office.

·

Registration is proof of the validity of the mark and the registrant’s ownership of the mark.2 These legal presumptions simplify the evidence

needed in an enforcement action and may result in a considerable savings in legal fees.

·

After five years, the mark becomes “incontestible.” The registration is then conclusive evidence of validity and ownership, and the mark may only be canceled on certain specified grounds.3 This is the most important benefit of a federal registration.

·

Each of the foregoing protections is effective anywhere within the United States, and is not limited to California.

An application for federal registration must be submitted to the U.S. Patent and Trademark Office, along with a filing fee of $245.00 for each category of goods or services covered. One tradename may be used to describe one or more of 42 recognized categories of goods and services set out by the PTO. A list of the 42 categories of goods and services is attached as Exhibit 1.

215 U.S.C. § 1051; 15 U.S.C. §§ 1057(b), 1115(a). 315 U.S.C. §§ 1065, 1115(b).

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Trademark applications are reviewed by an examining attorney in the U.S. Patent and Trademark Office. The Examining Attorney works to ensure that all statutory requirements are met and that the mark is registrable. The Examining Attorney also determines whether the mark is distinctive and whether it is confusingly similar to any previously registered trademark. If so, the application is rejected.

If the Examining Attorney determines that the mark is registrable, the Patent and Trademark Office will publish it for opposition in the PTO’s Official Gazette. During the thirtyday opposition period, which can be extended for up to an additional 90 days, interested parties can oppose registration. If no opposition is filed, a certificate of registration will be issued. Once registered, the statutory ® notice indicates that a mark is federally registered. Other forms of statutory notice include the words “Registered in U.S. Patent Office” or “Reg. U.S. Pat. Off.”

A federal trademark registration is effective for ten years and may be renewed for additional ten year terms. After the fifth year, to keep a federal trademark registration alive, the registered owner must file an affidavit or declaration (1) attaching a specimen showing exactly how the mark is currently in used with the goods and services (e.g. a tag, label, advertisement for service etc.); and (2) containing other factual information showing that the mark is still being used on the goods or services covered by the original registration. If this fifth year affidavit is not filed, the registration is canceled and the benefits of a federal trademark registration are lost. Also, if registered a mark is registered but not enforced because unauthorized persons continue to use the mark, all benefits of registration will be lost. To preserve the registration protections, the applicant must assert its rights and take legal action if necessary to prevent unauthorized use of the mark by others.

B.

STATE REGISTRATION. Trademark registration in California is made

with the Secretary of State and is very simple. There is no examination procedure or publication
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requirement. A certification of registration is issued, which is proof of registration, and prima facie evidence of ownership of the trademark.4 There is no charge for filings made by the Board of Trustees.5 A California registration is effective for 10 years, and must be renewed from time to time. There is no requirement to file a fifth year affidavit because no special protections arise after five years of registration as in federal system.

Unlike a federal registration which becomes “incontestible” after five years, a California registration will not adversely affect the rights of unregistered trademarks that can establish priority6 even years after the initial registration. Thus, even though a California registration has been completed, a registered mark can be challenged at any time and the trademark owner may be forced to incur additional legal expense to locate witnesses who can testify and prove the exact date the mark was first used and that it has been continuously used since then. This proof may be especially difficult if few records exist and employees have changed jobs and moved on. For these reasons, a California registration may not be as desirable as a federal registration.

IV.

LICENSING THE TRADEMARK TO OTHERS

A registered trademark owner may grant permission, or license, use of the trademark to others. For example, The Board of Trustees may license the use of the descriptive trademark “Sonoma State” to a campus bookstore operated by an auxiliary foundation and it may sell goods to the public bearing that mark. Licensing may become an important revenue source. Students or other consumers who wish to show their affinity to the university often do so by purchasing notebooks, T-shirts, or other goods bearing a CSU campus name.

4Cal. Bus. & Prof. Code §14241. 5California Government Code section 6103. 6Cal. Bus. & Prof. Code §14210.

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To preserve the trademark rights, a valid licensing agreement must always be in place whenever a license is granted. Only The Board of Trustees or their designated representative may sign license agreements for the “California State University,” a CSU campus, or any abbreviation of those names. Other trademarks may be licensed by the auxiliary corporation or other entity named as the registered owner of the mark.

The terms of the license agreement must ensure that the registered owner maintains control over the nature and quality of goods or services sold. This quality assurance function protects the public from being misled or deceived about the sponsorship, and authenticity of the services or goods identified by the mark.

License agreements should include, at a minimum, an acknowledgment of the registered owner’s right to control the nature and quality of the goods, and a right to inspect samples and approve the licensee’s operations. If a registered owner fails to prevent a licensee from using the mark to promote or sell substandard services or products, a loss of trademark rights can result.

V.

PROPER APPLICANT FOR A UNIVERSITY TRADEMARK

A trademark that includes the name of the "California State University," a CSU campus, or any abbreviation of those names is owned by the Board of Trustees of the California State University.7 Trademarks containing such names or abbreviations must be registered in the name of the Board of Trustees of the California State University. All other university trademarks may be owned either by the Trustees, a foundation or an auxiliary corporation. CSU campuses are not separate legal entities, and cannot therefore be the registered owner of any trademark.

7Education Code section 89005.5

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VI.

REGISTERING TRADEMARKS.

A.

WHAT TO REGISTER.

All important campus names, nicknames and

visual images should be considered for trademark registration, and each must be registered separately as trademarks in any one of 42 official categories of goods or services used by the Patent and Trademark Office and the state trademark office.

B.

THE REGISTRATION FORMS. Forms for federal trademark

registrations may be obtained from: U.S. DEPARTMENT OF COMMERCE Patent and Trademark Office Washington, D.C. 20231

These forms and an explanatory booklet may be requested from the Patent and Trademark Office by telephone: (703) 308-9000, or (703) 305-8716, or (800) 785-9199. A web site may be found at http://www.uspto.gov/ and it has forms and other useful information.

Forms for California trademark registrations may be obtained from: California Secretary of State Trademark Unit P.O. Box 944225 Sacramento, California 94244-2250

These forms may be requested from the California Secretary of State by telephone: (916) 653-4984.

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C.

MAINTAINING CSU TRADEMARK FILES. It is important in

connection with every trademark registration to prepare and maintain a trademark file that holds all records, which document and establish the factual information contained in the trademark application. The file should also attempt to document the actual use of the mark by the university. This includes records showing the date the mark was first used in commerce and actual copies of the mark as it was originally used. Special care should be taken to document the accuracy of important facts like the date the trademark was first used to identify the CSU services or other articles offered to the public. Since the trademark application and the fifth year affidavit must be signed under penalty of perjury, it is imperative that the information be truthful.

To illustrate, if a new university seal is adopted for CSU campus stationery, and public signs, the trademark file might include such things as:

·

The artist’s original graphic design.

·

Copies of blank stationery bearing the seal, and anything else bearing the seal such as copies of brochures, college catalogues or student handouts.

·

Copies of actual correspondence on the new stationery showing the public use of the new seal.

·

A photograph of each new sign containing the new seal.

·

Copies of all advertisements (including the date and name of the media company).

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·

Copies of billing receipts and canceled checks in payment for advertising, stationery, or the manufacturing of new signs.

·

Copies of all licensing agreements.

·

Other records, writings, photographs, etc. showing the visual appearance of the trademark, the date of its first use in interstate commerce and its subsequent use to identify CSU services or goods. This could include sales records and receipts if the seal is used in connection with CSU services or other products provided to the public.

It is even more important to prepare a trademark file if a university logo or seal is already in use. Before documents and records are discarded or misplaced, it is extremely important to gather and collect them in a trademark file so they may be available for future reference or litigation if the trademark is challenged. Again, records should be collected in the trademark file to show the visual appearance of the trademark, the date of its first use by the CSU and its continuous use thereafter.

For a period of at least six years after the initial trademark file is prepared, it should be supplemented with additional records to document the public use of the new trademark and the efforts taken to prevent others from improperly using the new trademark. This internal CSU trademark file becomes the permanent business record of the accuracy of the registration application and the use of the mark before and after the registration. It is difficult work to maintain this file, but the records are often impossible to obtain years later, if they are not maintained.

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A separate file should be maintained for each registration application so that ample documentation exists to support the factual assertions made in each fifth year affidavit.

D.

SAMPLE APPLICATION FORMS. As an example, attached as

Exhibit 2, is a copy of a CSU trademark registration application for a federal registration of the service mark for the university seal for “California State University, Monterey Bay 1994.” This application was accepted by the Patent and Trademark Office. It is not intended to provide any specific legal advice on the information needed to satisfy all requirements for registration. Each mark is unique and each application will depend upon the specific facts and documents that are gathered and collected in the trademark file pertaining to each registration.

VII.

CONCLUSION

Trademark is a complex area of intellectual property law. This Manual is general and is intended only to provide basic information. University Counsel assigned to each campus are available to respond to any questions or to assist in the trademark application process.

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EXHIBIT 1

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EXHIBIT 2

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