NGB BEST PRACTICES SEMINAR Trademarks: Tips and Tricks

NGB BEST PRACTICES SEMINAR Trademarks: Tips and Tricks

What is a Trademark or Service Mark? Use on Goods: a word, phrase, symbol, design, or a combination thereof, that identifies and distinguishes the source of your goods. Use with Services: same as a trademark, except that it identifies and distinguishes the source of a service provided by you to others rather than your goods.

Examples of Registered Trademarks/Service Marks Words Only Marks: Logo Only Marks: Composite Marks - Words + Design:

How to Establish Trademark or Service Mark Rights o o o Actual Use in Commerce Common Law Rights Registration State Federal How to Indicate your Trademark Rights o When to use TM o When to use SM o When to use

Federal Trademark Registration Two types of Trademark Applications o Actual Use o Intent to Use Classes of Goods and Services Depiction of the Mark ( the Drawing ) o Black and White Drawing vs. Color Drawing Examples of Use ( Specimens )

What happens after you file a TM application? o Review by PTO o Office Action o Publication o Issuance of Registration Certificate or Notice of Allowance Federal Registration Timeline o 9 months to 3 years How to Maintain a Trademark Registration? o o Declaration of Use between 5 th and 6 th year after registration Application for Renewal between 9 th and 10 th year after registration and every 10 years after that

Modifications of Marks Material Alteration Original Marks Modified Marks Here the USPTO approved the changes to the registration of the mark. The USPTO said the commercial impression of the mark did not change, so there was no material alteration of the mark and the trademark registration could be modified. Here the USPTO found that the absence of the moon design from the revised mark changes the commercial impression of the mark; therefore, the modified mark would be a material alteration of the mark and the trademark owner would have to file a new trademark application.

Infringement o o A third party, without your permission, consent, or approval, is using your mark or a confusingly similar mark to promote and/or market their goods and services. Such use would lead reasonable persons to conclude that there is a relationship, association or other affiliation between you and the third party. Enforcement of Rights

Social Media

Living with Social Media * Facebook now boasts around a billion FB pages * Team USA s YouTube channel has over 9 million video views * U.S. Olympic Team FB fan page has over 2.4 million Likes * Twitter fans re-tweeted many Olympic tweets, for example: Phelps 4x200 free win - 6.2K Retweets Gymnastics Gold - 4K Retweets Phelps medal count - 3.9K Retweets NGB BEST PRACTICES SEMINAR

Domino s Pizza tweet during Vancouver 2010 Olympics: Order our #newpizza 2nite & watch the Opening Ceremonies. 2 med. 2 topping pizzas for $5.99/ea. Order at http://bit.ly/newpizza

Misuse of SOCHI 2014 & Olympic Rings mark

Use of Olympic Rings by NGB sponsor

Ambush Marketing A type of marketing by a company that is not an official sponsor of an event, but which places advertising using the event to induce customers to pay attention to the ad. 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition 27:66 (4th ed. 2011) (emphasis added).

Who Cares about Ambush and Why?

Billboard seen from I-15 in Salt Lake City 2002 Discount Tires was not an Olympic Sponsor. The USOC demanded that they replace the billboard or face litigation.

This advertiser claimed it had no intent to infringe on any Olympic trademark.

19 NGB BEST PRACTICES In Torino, the advertising on the trains made it appear that Target was an Olympic sponsor. In London, Coca-Cola decided to occupy the field with its Celebrate Britain s Beat campaign plastered throughout many Tube stations.

No overt Olympic reference used.

NGB sponsor using Olympic photo and Olympic terminology without USOC authorization.

Rule 40 NGB BEST PRACTICES SEMINAR Trademarks

Rule 40 of the Olympic Charter states: Except as permitted by the IOC Executive Board, no competitor, coach, trainer or official who participates in the Olympic Games may allow his person, name, picture or sports performances to be used for advertising purposes during the Olympic Games.

Issues handled by USOC Anti-Ambush Team May 2012 August 2012

Athlete-owned company website No Olympic references.

Biographical Olympic references balanced by other accomplishments

White Lochte ride the wave novelty glasses.* Price: $14.99 Found on www.ryanlochte.com/store The USOC asked athlete to remove these from website during the Rule 40 blackout period for London.

Athlete name and biographical Olympic reference appeared on product packaging. USOC granted Rule 40 waiver that allowed product to stay in the market. But sponsor could not run print or radio ads during the Blackout and its website had to be modified.

Found on the Nautica website during Beijing Help educate your athletes about Rule 40 restrictions and avoid these issues from the outset.

Problems can arise even when athletes and their agents know the rules NGB BEST PRACTICES SEMINAR Trademarks

Trademarks A great trademark is appropriate, dynamic, distinctive, memorable and unique. - Primo Angeli NGB BEST PRACTICES SEMINAR Trademarks