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When Do I Need My First Trademark: An Interview With Donna Tobin

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Narrator: This is the DarshanTalks Podcast. Regulatory guy, irregular podcast, with host Darshan Kulkarni. You can find the show on Twitter @darshantalks or the show's website at darshantalks.com.

Darshan: Hey, everyone. Welcome to another episode of DarshanTalks. We have a very special guest. We have Donna Tobin, and Donna is someone I've known for several years, and she is what I refer to as the trademark lawyer extraordinaire. She has been someone I have reached out to for complex trademark type questions. She's going to talk to us a little bit about trademarking, because we've got a lot of questions that have been asked about, "Well, do I need to file for a trademark? How early should I file," et cetera. So, Donna, do you want to introduce yourself before we go on?

Donna: Sure. Thank you so much. Thank you for those really nice words. I have been practicing trademark litigation and prosecution, and prosecution means actually getting a trademark registered in the trademark office. I've been litigating them and prosecuting them for over 35 years. Hard to say without choking, but anyway, yeah, I've mostly practiced in the trademark arena my entire career, and a lot has changed, which I think will come up.

Darshan: I'm sure.

Donna: Yeah.

Darshan: So, where are you now, Donna? Are you on your own, or...

Donna: I am at a law firm that's based in Philadelphia, called Royer Cooper Cohen Braunfeld, mostly corporate M&A lawyers, and a year ago I brought a trademark group to them, because that's a practice that fits right in with what they're doing. A lot of their clients, once they have businesses that are up and running, one of the next things that you should think about is your brand, your trademark, and protecting that and enforcing it, and making sure that you're not stepping on anyone else's brand.

So, it's been great. It's a year old. Half of it was established in a pandemic. I hired trademark associates, two of which I haven't met in person yet, because they started the day we shut down. So, it's been interesting, but it's been great, and there was a little bit of a lull in March. People really were, for obvious reasons, taking a step back, but now people are thinking about their trademarks and their brands again, and it's kind of business as usual, which is good.

Darshan: So, that raises the really basic question, Donna. If a corporate group brings in a trademark group to help them, it sounds like they think that, and I know this from experience itself, there is significant crossover and the timing is right for those two groups to be working together.

So, this is a question I get asked all the time. "I have a great idea for a business. Should I first go after my trademark?" When do you think is the right time to apply for a trademark?

Donna: That's a great question, and I want to answer it by not answering that question first. I think it's important to just start out with, what's a trademark, what's a patent, what's a copyright, because often those things are all developed around the same time.

So, if you have a great idea for a business, let's say you're developing a new drug. There could be patents on the compounds, or on the method of manufacture. There could be copyrights on your text, your brochures, your graphic design. So, inventions are covered by patents, and then graphics, text, works of authorship, are protected by copyright.

Then there's trademarks, and either they all sort of happen at the same time, or the patentable invention comes first, and then, what are we going to call this thing, and that's the brand. A slogan, a logo, a name, a color, or even a smell or a sound, can function as trademarks.

Something that associates you as the source of a service or product with that service or product. So, for example, the NBC chime is a sound mark. Pink for fiberglass is a color mark. The Nike Swoosh is a logo mark. Then there are lots of names we can think of. Apple, American Airlines, Nike, those are word marks.

So, when to register your trademark? Interestingly in the US, trademark rights are not created upon registration. There are generally two different trademark schemes in the world. One is first-to-file, one is first-to-use. The US is first to use. So, you never actually have to register your trademark in order to have rights, whereas in China, for example, whoever wins the race to the trademark office wins, regardless of whether you've started using it first. Whoever registers it first in China, they get that trademark, and it's very hard to get it away once somebody registers.

Here, you could use a mark forever and never register it, and your rights develop based on use. So, for example, if I have a product and I start using a name for it. Blue, let's say, for a cosmetic, and I just keep using that and I sell it in three different states, and I use it only on shampoo.

I will have rights in Blue in those three states for shampoo. It's limited to what I've actually used. So, the good news is, if someone uses it in one of those three states for a product that's the same as mine, or even something similar, like conditioner, I can probably take my rights to federal court without a registration and enforce those rights, and sue those people.

The problem is, what if I'm in New York, New Jersey and Connecticut, and someone is infringing my brand in California? Well, then common law rights don't help you there, and that's why federal registration can help. You will then have nationwide rights even in places where you are not, and even for goods that are similar, but not goods that you've used your mark on.

So the question, when to register? I mean, I would say, of course, as soon as possible, because you don't want someone else to register and then you have to sue them to prove that you used it first. That costs money. Ultimately you'll win, but that's not really a solace if you don't want to spend money on that.

So, filing an application is really a very cheap way to start the process, get it going, and then save yourself money later on. A lot of people, a lot of companies, aren't thinking about that, understandably so, but you can save yourself a lot of trouble by doing it early. You can even file an application before you use your trademark while you're getting the manufacturing or the research, or whatever else you're doing. You can put that marker in the sand, get that filing date, and then no one can come after you, file after your date and own that mark.

Darshan: So, I have several questions that came out of that little spiel you put up there, which is... No, no, no, I mean, I appreciated that. What I was trying to figure out there is, first my experience, which was when I went to Australia, I thought it was really fascinating because the Burger King mark is taken, I gather.

Donna: Yeah. Yep.

Darshan: Are you aware of that case? You want to talk a little bit about that? Like how that-

Donna: I took a picture of it in the airport, honestly.

Darshan: Did you?

Donna: I did. That is one of those things that, as soon as I landed, of course, it's a trademark groupie thing. Yeah, I took a picture of it as soon as I landed, because in Australia, of course, Burger King was taken already. There was someone there that had registered it and used it, and trademarks are territorial.

So you might be using your mark in the US, but in Australia, if someone else is using Burger King, you can't register Burger King. You have to call yourself something else, like Hungry Jacks, which is what they picked.

So, even Canada, if you are going to use your mark in Canada, you need to make sure it's available there, and register it there, except for incredibly famous marks, and depending on the jurisdiction, you really can't use a mark that you're using in the US anywhere else unless you can also use it there, sort of starting from scratch and working within their scheme. So, whether it's registering first or using first or both, but they don't transfer from one country to another.

Darshan: So, you raise an interesting point there, which is that you may be able to get some rights around quote, unquote, "incredibly famous marks." So, again, I'm going back to 20 years ago and my trademarks and intellectual property class, but my question is, you need to demonstrate that you have and intend to use the mark for you to continue to have rights in the mark, is my recollection. Is that still true?

Donna: I assume you're talking about the US, right?

Darshan: I am talking about the US, yes.

Donna: Okay. So, in the US, an intent to use a mark really relates to registration, and the law changed several, now many, years ago. It used to be that you couldn't file an application until you actually had use. You would have to get that product on the market and prove use in commerce, product or service, before you filed the application. Then the law changed to allow what's called intent-to-use application, and that was really a very good thing for companies, particularly companies like pharmaceutical companies, drug companies, people who are involved in development. The product's not going to come to market for a couple years because of other things that have to be done with the product, but you don't want your name to be taken in the meantime.

You don't want someone else to start using it for a similar product, or run out and file an application. So, now you can file what's called an intent-to-use application, but you have to swear in the declaration, under penalty of perjury, that you have a bona fide intent to use, and that really has significance in the law.

Marks that are registered have become invalidated because it was shown that, at the time the application was filed, there was no real bona fide intent to use. What is a bona fide intent? You have to have a business plan, those kinds of things. A business plan helps. Written plans, strategy, marketing, what the product is, with the brand name, and it has happened fairly often that people will contest a mark and say, "It's registered now, but at the very beginning, you didn't have a bona fide intent, and that makes the whole mark invalid," and marks have been invalidated.

So, if you're filing that application and declaring that bona fide intent to use, it really does have significance, and it has to be supported, hopefully by contemporaneous documentation at the time when you're developing the mark and the product, and hold on to that stuff, because you might need it.

Darshan: So, the reason I raised that idea is, you mentioned Canada, and you talked about how Canada is first-to-register while the US is first-to-use. I guess what I was wondering is what stops me from registering Tim Hortons in Philadelphia and going... I actually have no idea if Tim Hortons is one of your clients.

So, I'm hoping there aren't, but Tim Hortons is this very famous coffee, as you know. It's their version of Starbucks, if you will, and what stops me from going, "You know what, I'm going to start a Tim Hortons chain from Philadelphia, and go from there." How do they protect their mark, and maybe it's not the US, maybe it's China or somewhere else. How does that get played out?

Donna: Right. Okay. So, first of all, I apologize if I confused things. The reason I mentioned Canada was because if you have US rights here, you still need to get rights in Canada in order to enforce your mark and use your mark there.

Darshan: Oh, okay.

Donna: Canada is actually also a first-to-use, but I was just using it as an example of the fact that trademarks are only territorial, and one country doesn't spill over to another country, and since that's our closest neighbor, people might think if, "I have a US registration, I can sue someone in Canada," but you can't.

Darshan: Fair enough.

Donna: That was the reason for that, but your other question is a good one. As I understand it, what would stop you from registering a Canadian mark like Tim Horton's here, right?

Darshan: Right.

Donna: So, Tim Hortons has... Quick check, has nine US registrations-

Darshan: Really?

Donna: ... and two pending applications. Seven registrations, two pending applications. So, yeah, the answer is they know that if they want to enforce their mark in the US they need to register here, and that means they need to use here.

Darshan: What is their intended use?

Donna: So, there used to be Tim Hortons on the Upper West Side. What that-

Darshan: Did you say there's a Tim Hortons on the Upper West Side?

Donna: There used to be.

Darshan: Oh. Oh.

Donna: It closed. On the Upper West Side of New York, but they did use it in the US, and I assume they're still using it where you are. So, yeah, they have seven registrations for Tim Hortons with various other names and two pending applications, because they're enforcing their rights and protecting their rights here.

Now, whether they do it in China is another question, but they would be smart to do so. The first-to-register countries often don't require use at the same time as registration. It's kind of a flip-flop from us.

So, you can register in China and not have to use it until somebody contests the fact that you have this registration and you've never used it. So it's really kind of, you could sit there on the register and if no one bothers you, and tries to allege that you've never used it, sometimes it's within three years or five years, depending on the foreign trademark law, your registration just stays there.

So, even if you're not using it in a foreign country, it's sometimes a very good idea to look at the first-to-file countries, and if they're important to you, to file there. It's relatively inexpensive compared to a fight later.

Darshan: So, is that similar to what we call on the internet domain squatting, where you buy a URL and just wait until someone tries to buy you out? Is that the same concept, then?

Donna: Interesting. Not really because, again, if you're filing a trademark in a foreign country under this scenario, it's really a mark that you're using in other places, and you don't want someone to take it from you before you can enter that country.

A lot of companies have plans to expand. So, you may not be ready to expand in China or Mexico, or one of those other countries now, but you want to make sure you can, that the road is clear for you when you are ready.

Now, interestingly, you're probably right that on the other side of it, if I hear about Tim Hortons and I go and register it in Sweden, because I think they're coming to Sweden, eventually, I kind of am cybersquatting, and I can just sit there, if I have no relation to the brand, until somebody bothers me, and then try to sell it.

So, in that sense, it is right that if you are a brand and you want to expand, there may be people that are going to squat on those rights, just like domain names.

Darshan: So, the interesting thing that I've always explored in the life sciences around... Well, I'll start with this one, because I find this one to be particularly interesting. The two big trademark issues I have been made aware of before is the fact that, I don't know if you know this, I'm sure you do, but Viagra's blue color is unique to Viagra, and I was fascinated by that.

I thought it was just happenstance if you will, or it may not even be true, but it turns out there are companies who will give you a color and assign it to only you, and it's near impossible to duplicate that because of just the processes they use. Have you seen that type of... Well, that's my first sort of comment with it.

The second scenario I've seen this pop up is when they used to sell sale brand-name Valium, and I used to be a pharmacist at that time, and the pill used to have a V in the middle. I used to think, oh, that's just branding, but turns out that because they put the V in the middle, the way the tablet actually releases the drug is in a very, very unique way.

So, unless you copied that somehow, it's very difficult to match the bioavailability of the drug. So, have you seen functional trademarks, for lack of a better term, like that?

Donna: So, I have to unpack that question because there's a lot of interesting things in there. First of all, I think I mentioned at the beginning of our talks, that color can be trademarked. I don't think Viagra has a registration for the blue, but fiberglass, there's a particular pink fiberglass. That's a registered trademark. There is a registration for white gunpowder, and those marks are... Excuse me?

Darshan: No, I think that's interesting. I wouldn't have thought of white gunpowder, but okay.

Donna: Yeah. So,the color white for gunpowder, and those marks are interesting because they are less traditional marks, and you have to prove secondary meaning, those trademarks have to do with the characteristic of the product. So, you need to invest lots of money in advertising, you know, "Look for the little blue pill," or, "Look for the white gunpowder, the only white gunpowder." Focus on "look for" type advertising so people associate that color with your product, and if you can prove that recognition, you can register those marks.

I think Viagra tried to register a diamond shape for their pills, and shapes of products are also registrable, pills too, but you can't register something that everyone else is using, obviously. So, I think that's why they couldn't register the-.

Darshan: The only reason I said that is I know that, for example, companies like Colorcon, all their job is, is to come up with unique colors. So, I thought that they'd helped, but for all you know, they couldn't get the registration, or it didn't work out, or maybe they never bothered because the chance of someone copying it is just really hard. So, I don't know what the logic was, it's just-

Donna: Well, but those color marks can be very important, right? "Look for the blue pill." I mean, I think they do some of that advertising, but you did ask a question there about functionality, and if there is something on the pill, like a logo or something, it's registrable unless it's functional.

You can't register something that's functional because, really, the concept is you can't prevent other people from doing something functional by tying it up as a trademark.

So, if there's some bioavailability that results in that pill shape or pill design, then it's going to be very hard to register, if not impossible, because trademarks can't relate to functional aspects of a product.

Darshan: But I would expect that someone... Again, we're speaking about a product that I don't know if they still sell in a brand forum. So, we're not speaking about that product specifically, and neither of us is giving any legal advice. I love the disclaimers, but the thought that comes to mind for me is the idea that if I was the maker of Valium, and I'm going to guess it's Schering-Plough, but I could be wrong, but if I was a maker of Valium, my argument would be, "Well, you could get the same goal, same result. You just have to figure it out for yourself."

So, you could try to achieve it using a round pill, but you'd have to adjust your release rate and just do like 19 other things. So, is this the standard for functional trademarks just, you can't have it if there's a function to it, or is it, if it's just more difficult, that's not good enough to stop people from having a functional trademark? Does that question make sense?

Donna: It does. I mean, you can't have a trademark on a functional aspect of a product, but that doesn't stop you from arguing that the functional aspect not the primary aspect, it's really ornamentation. People recognize it. It's this interestingly-shaped pill, and the functionality is not the primary element of that design or that shape.

So, it's really, is it primarily functional? Sometimes you can argue it's not primarily functional, that's not the reason for it. It may be a side bonus, but it's not the reason for that shape. It's really arbitrary, and you'd have to prove that. You'd have to prove it with the type of advertising or studies on what that shape does or doesn't function as. Does that answer your question?

Darshan: Yeah. Yeah, I think it does.

Donna: Yeah. Okay.

Darshan: And if we have more questions, Donna, how we can reach you to ask for clarification?

Donna: I'm sorry, you cut out. What was that?

Darshan: No, no, sorry. It did answer my question-

Donna: Good.

Darshan: ... but I expect some people may have additional questions. So, how can they reach to ask for clarification?

Donna: [email protected]

Darshan: Donna, it was wonderful having you. I hope we can do this again.

Donna: Thank you. Thank you so much. Thank you for having me. I hope so too. Have a good one.

Narrator: This is the DarshanTalks Podcast. Regulatory guy, irregular podcast, with host Darshan Kulkarni. You can find the show on Twitter @darshantalks or the show's website at darshantalks.com.

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