The past few years have witnessed an explosion of legal and regulatory activity involving social and other new media. This session will examine several key areas, including copyright, trademark and related intellectual property concerns; defamation, obscenity and related liability; false advertising and marketing restrictions; gaming; data privacy issues presented by social media; and impacts of social media on employees and the workplace. Attendees will learn how to identify legal risks and issues before they become full-scale emergencies and how to develop appropriate policies and guidelines covering social media activity.
The RSA® Conference 2012 is coming up: February 27 – March 2, 2012 at the Moscone cEnter in San Francisco, CA.
Can’t make the Conference? Listen to the podcast here to get a sense of what you need to know.
Recent Decisions Highlight Need For Objective Evidence of Intent to Use Mark
Two recent decisions at the Trademark Trial & Appeal Board (TTAB) indicate what may be an emerging trend in Trademark practice: challenges based on lack of evidence of a “bona fide” intent to use a mark for which a Section 2(b) Intent-to-Use (ITU) application has been filed. The two relevant decisions are Kaplan v. Brady and Nintendo of America, Inc. v. Adar Golad.
Every ITU Applicant makes a legal averment, under oath, that it has a “bona fide” intent to use the mark in commerce. “To show a bona fide intent to use, there must be ‘objective evidence,’ that is evidence in the form of ‘real life facts and by the actions of the applicant.’ J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Sec. 19:14 (4th ed. 2009). There should be some ‘definite’ (if not necessarily ‘concrete’) plan by applicant. For example, ‘written plan of action for a new product or service,’ or a ‘re-branding of an existing line of goods or services.’ Id.” In the two cited cases, lack of such definite evidence proved fatal.
The first decision is a Cancellation action where one party (Kaplan) sought to have the registration of another party (Brady) cancelled. Kaplan’s claim for cancellation of Brady’s FUNNY-FACE mark was based on the existence of Kaplan’s ITU application for the mark FUNNY FACE FIZZY BLAST! Although the parties exchanged several motions, of interest here is the Board’s determination that Kaplan lacked standing to prosecute the cancellation because Kaplan had “produced no documentation supporting his alleged bona fide intent to use such mark other than a “completely phony” and undated business plan that is merely a “slightly altered version” of a business plan for use of the mark BAKE OFF! on a “cleansing product.”
The second decision is an Opposition proceeding where one party (Nintendo) sought to prevent the registration of another party’s (Golad) mark by opposing the application. Golad filed an ITU application to register the mark FLASHBOY for “plug and play interactive video games … comprised of computer hardware and software.” Nintendo opposed the registration on the ground that FLASHBOY is likely to cause confusion with its Registration for the mark GAMEBOY for game equipment, etc.
During discovery, Golad admitted that he did not have a business plan or any other documentation reflecting plans to “advertise, manufacture or otherwise use the mark FLASHBOY in commerce on the goods for which applicant seeks registration.” That was enough to establish a lack of bona fide intent.
Summary: Practice Tip
Both applicants and trademark counsel need to be aware of the requirement that an ITU application be supported by at least some definite evidence of the applicant’s bona fide intent to use the mark. While it remains unclear whether a business plan alone is sufficient to meet this burden, an applicant must be able to produce some type of evidence, through documents or testimony, indicating plans to advertise, manufacture, distribute, license or otherwise use the mark.
WordCluster Analytics Provide Rapid Visualization of Hot Topics
Kudos to Barry Ritholz and his Blog The Big Picture for turning us all on to a phenomenal new social media metrics tool: Tweet Topic Explorer. This Tool retrieves the most commonly used words in recent (no word on time period covered by “recent”) “tweets” for a specific user and displays these visually using bubble clusters. The area of the circle for a word is proportional to that word’s frequency. Words most often used together are grouped by color.
For example, using my Twitter handle, @adlerlaw, produces a cloud that shows the words “film,” “media,” “legal,” “social” and “Chicago” are among my most frequently used words. Looking at groupings, “Film” is used most commonly with words like “tax” and “indie.” The words “Law” and “Legal” appear most frequently with “social,” “media” “brand,” and “trademark.”
The potential for brand managers and social media marketing professionals is obvious. First, a brand manager can quickly and easily analyze what key words are being used and how they are being used for any given twitter handle. Note that if your handle is identical to a brand name, this is critical visual evidence of the words being used in connection with your brand! Second, if you area marketing professional, you can analyze individual handles to get feedback on words being used by social media influencers and other specific followers.
The value should be obvious by now. This tool creates an amazing feedback mechanism. The brand owner/marketing professional can easily see if the message they are trying to communicate is really coming through as well as they intend. For example, check out the word cloud for “Coca-Cola.” I was amazed to see that the most frequent word is “^GD.” I don’t know about you, but that’s not communicating anything about the brand. Whereas positive attribute words like “sharing” and “delicious” are much less prominent.
Also, the potential to uncover negative words will be displayed prominently. This gives brand managers insight into the areas, issues and users that they need to target.
I’m not saying its going to be easy. In order to get the most out of this tool, one is going to have to spend time analyzing users one by one. However, this is one of the best tools I’ve seen that breaks tweets down into a clear, visual, actionable matrix.
ABOUT THE AUTHOR
David M. Adler, Esq. is an attorney, author, educator, entrepreneur and founder of a boutique intellectual property law firm based in Chicago, Illinois. With over fourteen years of legal experience, Mr. Adler created the firm with a specific mission in mind: to provide businesses with a competitive advantage by enabling them to leverage their intangible assets and creative content in a way that drives innovation and increases the overall value of the business. Learn more about me HERE.
David M. Adler, Esq. Safeguarding Ideas, Relationships & Talent®
Confused by what is and is not Green? You’re not alone.
Part 1 of 5
The last few years have seen a dramatic increase in consumer awareness and concern for environmentally-conscious or “green” consumerism. Coincidentally, as consumers join the movement to be more eco-friendly, businesses have likewise embraced both being green and being perceived as green in their marketing practices. The rapid proliferation of “green” brands begs the question “How do consumers and institutional buyers know if something is “green” or “eco-friendly”?”
To address such concerns, companies and industries have launched “ecolabels” and “eco-certification” schemes to add credibility to green claims, guide eco-friendly purchasing, and improve environmental performance standards. Demand for products with ecolabels is growing, though confusion about which companies are truly environmentally responsible persists.
Since environmental claims made in advertisements are often intangible, businesses need to make them resonate to consumers beyond just feeling good about what they are buying. Consumers and businesses can benefit from eco-labels by: (1) understanding how certification marks, labels and logos can be used to signal green credentials, (2) using and maintaining proper best practices and guidelines to which companies must adhere in order to meet a certified standard, (3) understanding which companies have succeeded in branding and why, (4) understanding how to avoid accusations of “greenwashing”, or exaggerated claims in their marketing, and (5) keeping informed about the changes in the legal and regulatory environment, such as the FTC‘s Green Guides for marketers.
This five-part series on “green” branding will discuss how to identify these issues, provide guidance on proper use of “green” certification marks, a/k/a “eco-labels,” develop policies and procedures to avoid misleading or unproven environmental claims and keep informed about the current trends, marketing strategies and regulatory regimes.
Certification marks, and their role in signaling green credentials
A certification mark “certifies” the nature or origin of the goods or services to which it has been applied. This includes, for example, region or location or origin, materials of construction, method or mode of manufacture or provision, quality assurance, accuracy of the goods or services or any definable characteristic of the goods or services. It can also certify manufacture or provision of services by members of a union or other organization to certain standards.
For example, the Fair Trade Certified™ label applied to food products ensures that farmers and farm workers in developing nations receive a fair price for their product, have direct trade relations with buyers and access to credit, and encourage sustainable farming methods, without the use of a dozen of the most harmful pesticides, and forced child labor. The seal is viewed as a meaningful and clear signal that the producer supports the concepts of social responsibility, pest management and sustainable agriculture.
Under U.S. federal trademark law, a certification mark has a specific definition and certain characteristics. The term “certification mark” means any word, name, symbol, or device, or any combination thereof that is used by a person other than its owner to certify origin, material, manufacture, quality, accuracy, or other characteristics of goods or services.
There are generally three types of certification marks. First, there are geographic certification marks that signal that goods or services originate in a specific region (e.g., ROQUEFORT for cheese). Second, there are quality certification marks that indicate goods or services meet certain standards in relation to quality, materials, or mode of manufacture (e.g., approval by Underwriters Laboratories). Third, there are labor certification marks that certify (i) services performed or labor used in the manufacture of a product were provided by a member of a union or other organization, or (ii) the service provider meets certain standards.
Certification marks possess two distinct characteristics that set them apart from trademarks or service marks. First, unlike a trademark, a certification mark is used by someone other than the owner. The mark is generally applied by other persons to their goods or services, with authorization from the owner of the mark. Second, while the exclusive purpose of a trademark is to indicate commercial source or distinguish the goods or services of one person from another, a certification mark has no such purpose.
A certification mark is not used in the trademark sense of “used.” Rather, it may be used only by persons other than the owner of the mark. That is, the owner of a certification mark does not apply the mark to his or her goods or services and, in fact, usually does not attach or apply the mark at all. The owner of a certification mark does not produce the goods or perform the services in connection with which the mark is used, and thus does not control their nature and quality. Rather, “control” consists of ensure that users of the mark meet the standards established by the certifier. The purpose of a certification mark is to inform purchasers that the goods or services of a person possess certain characteristics or meet certain qualifications or standards established by another person.
Proper us of “eco-friendly” certification marks can help businesses and marketers to add credibility to “green” marketing claims. As noted above, since the user of a certification mark is not the owner, the organization doing the certifying cannot itself engage in the production or marketing of the goods or services. Furthermore, the organization must be competent to certify that the requirements have been met. This is achieved by confirming adherence to the rules and regulations, providing methods of testing and quality control, and employing appointed individuals or bodies to periodically ensure conformance by a user.
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