To Register or not to Register: The Lanham Act and Basic Natural Trademark Laws

Below is a copy of my paper for Full Sail's last class. I found the Lanham Act which is the key document that describes all US trademark laws.

To Register or not to Register: The Lanham Act and Basic Natural Trademark Laws

Zon D. Petilla

Full Sail University

Many people consider if they should register their intellectual property (IP) with the United States Patent and Trademark Office (USPTO) when other successful independents have not (Scott, Straub, Kellett, and Guigar, 2008). For example, before becoming a TV show on AMC, Robert Kirkman protected “The Walking Dead” as a “TM” and not a “®” for register trademark (Kirkman, 2005 and Pennington, 2010). Thus, this paper is not to question the decision to register a trademark or not, but instead to explore how the Lanham Act protects natural trademarks through analysis of a court case. The case of Natural Answers Inc. versus Smithkline Beecham Corporation (d.b.a. GSK) explores how natural trademarks are protected under the Lanham act (Marcus, 2008). This paper will review this case in regards to trademark law then explore the implications as it relates to NeoGlow Entertainment’s future IP practices.

Summary of Facts from Court Case

Natural Answers from 2000 to 2002 developed, produced, and marketed herbal supplements such as “HerbaQuit Lozenges”. Without Food and Drug Administration (FDA) approval, this product was marketed and produced to help people stop smoking by satisfying their physical and psychological cravings for Tobacco. Natural Answers filed trademark applications for both “HerbaQuit” on April 12, 1994 and “HerbaQuit Lonzenges” on May 27, 1995 with the USPTO. Unfortunately, both were rejected; nonetheless, in 2000, Natural Answers marketed and sold HerbaQuit Lozenges in drugstores, supermarkets, convenience stores, and over the Internet (Marcus, 2008). Thus, Natural Answers placed their product for public consumption and used their natural trademark rights under the Lanham Act (“Lanham (Trademark) Act (15 U.S.C.) Index,” n.d.).

Under the Lanham Act, Natural Answers’ unregistered trademark for HerbaQuit was protected because the product was being marketed and offered to the public (Marcus, 2008 and “Lanham (Trademark) Act (15 U.S.C.) Index,” n.d.). From March to April 2001, GSK showed interest in an agreement with Natural Answers but never established an official deal to distribute HerbaQuit. After 50,000 packages were produced, Natural Answers off-shelved HerbaQuit March 2002 and discontinued production November 2002. In 2003, after a failed attempt to solicit to the Philip Morris USA Inc., Natural Answers seemed to stop production and sales of HerbaQuit in open markets (Marcus, 2008).

GSK, seven months after HerbaQuit was not visible on store shelves in 2002, decided to launch an FDA approved anti-tobacco product called “Commit Lozenges”. GSK advertised this motto with their product, “the first and only stop smoking lozenge”, which discredited HerbaQuit being on the market first or at all. GSK had started development of their product in 1998 about four years after HerbaQuit; however, they had FDA approval in 2002 after applying for product approval in 2000. Moreover, GSK had a registered trademark as of 2003 for Commit Lozenges. By 2005, Natural Answers pursued a ten-count complaint against GSK with the United States District Court for the Southern District of Florida and later appealed the court’s decision in 2008 in the United States Court of Appeals, Eleventh Circuit, (Marcus, 2008).

The Legal Issue

Did GSK violate Natural Answers’ trademark? Although Natural Answers filed a ten-count complaint related to GSK, for the purposes of this paper, the counts defined and listed in this section are more related to a potential direct violation of the Lanham Act. Also note, if the Lanham Act had been violated, then GSK would also more than likely be guilty of violating local state common laws as well (Marcus, 2008).

The following list defines the trademark infringements that Natural Answers accused GSK in relation to the Lanham Act and other related common laws:

• “Federal Trademark Infringement under 15 U.S.C. § 1125(a)”: This relates to laws that protect both registered and well-known unregistered marks from other companies to market and sell similar products (USPTO, 2010). For example, Natural Answers held no registered trademark of their product; however, when their product was advertised and sold in stores, it was protected (Marcus, 2008).

• “Federal Trademark Infringement Based on Reverse Confusion under 15 U.S.C. § 1125(a)”: This relates to an infringement that happens when a product is marketed in a way that causes consumers to mistakenly connect one brand to another (“Reverse Confusion,” n.d.). For example, GSK had advertised the Commit motto as, “the first and only stop smoking lozenge”; thus, Customers who were aware of HerbaQuit before of Commit might have thought the name had changed because to them HerbaQuit was the “first” and “only”; in turn, consumers may confuse HerbaQuit with GSK’s product (Marcus, 2008).

• “Common Law Trademark Disparagement”: This relates to misleading claims caused by a competitor of a similar product on the same market (“Trademark Infringement and Product Disparagement,” n.d.). For example, GSK stated, “…only stop smoking lozenge”, to describe their Commit Lozenges, which could make people think that there are no other similar products on the market such as HerbaQuit (Marcus, 2008).

• “Common Law Trademark Infringement”: This would be a violation of local state trademark laws (i.e. distribution issues affected by the marketing and selling of either product) (Marcus, 2008 and “Common Law Trademark Rights, ”n.d.).

The Original and Appeals Courts’ Analyses

Given the facts, the original court found that GSK was not guilty of the claims made by Natural Answers because Natural Answers abandoned their product; thus, any infringements or accusations of harm that happened to Natural Answers or their product “HerbaQuit” was void. Upon a United States Court of Appeals review, Marcus (2008) noted: “Under the Lanham Act, a trademark is deemed abandoned, and, thus no longer valid, ‘[w]hen its use has been discontinued with intent not to resume such use.’” The United States Court of Appeals reviewed the evidence from the original case in these terms.

Marcus (2008) cites as precedent “Cumulus Media, Inc. v. Clear Channel [Commc'ns], Inc., 304 F.3d 1167, 1173 (11th Cir.2002)”; meaning, if GSK proved that Natural Answers abandoned their product on the market, then GSK is not guilty of causing any harm to Natural Answers. As of 2002, the fact was Natural Answers showed no public intent to continue pursuit of their brand and had pulled their product off the public market. According to the Lanham Act, even though Natural Answers could argue they had a natural established trademark through various media forms such as the Internet, they no longer continued to market and offer their product for sale; in turn, they lost trademark protection under the Lanham Act (Marcus, 2008).
The Original and Appeals Court’s Final Decisions

By 2005, the original court’s decision sided on behalf of GSK not with Natural Answers because Natural Answers did not have FDA approval, a registered patent or trademark, or a product that was currently on the market. Thus, GSK was cleared against all claims made by Natural Answers because no apparent trademark violations were made. Natural Answers, feeling they still had a valid case, contested the original court’s decision and appealed (Marcus, 2008).

Upon a 2008 review by United States Court of Appeals, Judge Marcus (2008) had affirmed the original court’s decision based on the evidence that was presented and the state of Natural Answers’ HerbaQuit Lozenges’ production and market presence while GSK’s Commit Lozenges was on the market (Marcus, 2008). In regards to the sprit of the Lanham act and new precedent, Marcus (2008) did not feel this was a landmark case nor that any new exceptions should be made because Natural Answers was at the time not protected under the Lanham Act in anyway after the product was off the shelves in 2002.

Discussion

In hindsight, this case shows a company losing their trademark rights because they stopped marketing and selling their product to the general public. Simply put, before securing what was needed for a successful run, Natural Answers started product production and marketing. In regards to GSK negotiations, it seems Natural Answers feels they gave GSK an idea before GSK had filed for both FDA approval and a USPTO Trademark for their Commit Lozenges (Marcus, 2008).

In regards to their solicitations, Natural Answers went into production before exploring different options that could bring more credibility to their product. Before the case began, NeoGlow Entertainment (NE) believes that if there was more evidence (i.e. scientific studies) for Natural Answers’ claims of what HerbaQuit could do, then more sponsors and investors would have been more interested in investing in the production and marketing of the product prior to 1998.

For the 2003 Philip Morris USA Inc. Deal, Natural Answers simply needed money to continue, and approaching Philip Morris seemed a desperate attempt by Natural Answers to keep their product running because by that time GSK’s product was on the market with FDA approval (Marcus, 2008). How can NE avoid a similar issue related to its products? When we put a product out, we see it through; meaning, before fully committing to production, we will secure partnership agreements and necessary resources needed for successful product launches.

Considering applications of this case, NE has a better understanding of how registered and natural trademarks work under the Lanham Act. According to the Lanham Act and this case, “Web-presence” is not enough to maintain a natural trademark. The purpose of a trademark is to help consumers identify one brand over the other; in regards to products, a business must attempt to sell a product not only market it in order to maintain their natural trademark rights under the Lanham Act (USPTO, 2010 and “Lanham (Trademark) Act (15 U.S.C.) Index,” n.d.).

In conclusion, NE’s practices remain unchanged in our product and service development. We continue to develop strategic partners, sponsors, and investors in relationship to our projects, products, and services. Of course, studying this case has filled in many grey areas of what we should trademark and why. For example, the “popularity” or “well-known” argument in the Lanham Act directly corresponds to our web-presence because the “popularity” of NE or it’s products and services could be brought into question in relation to trademark and common law disputes (“Lanham (Trademark) Act (15 U.S.C.) Index,” n.d.). Pending our filling date, NE or a name related to NE will be a registered trademark sometime in 2012; on the other hand, our related products will more than likely fall under natural trademarks. As mentioned before, Kirkman’s “The Walking Dead” is not a registered trademark, but the company that publishes his products, “Image Comics”, has a registered trademark with USPTO (Kirkman, 2005 and Scott, Straub, Kellett, and Guigar, 2008). Future NE research will be more directed to Internet trademark law and common laws in regions that NE will market or sell products in. As laws change, our education must continue (Finnegan, 2011).

References:
Common Law Trademark Rights (n.d.) (Trademark) Act (15 U.S.C.) BitLaw. Retrieved on April 19th, 2011 from http://www.bitlaw.com/trademark/common.html

Finnegan (2011) Internet Trademark Case Summaries. Retrieved on April 20th from http://www.finnegan.com/publications/updatenewsletters/itcs/

Kirkman, R, (2005). The Walking Dead. Berkley: Image Comics

Lanham (Trademark) Act (15 U.S.C.) Index (n.d.) BitLaw. Retrieved on April 19th, 2011 from http://www.bitlaw.com/source/15usc/

Marcus (2008) Natural Answers Inc v. Smithkline Beecham Corporation

April 9th, 2011 from: http://caselaw.findlaw.com/us-11th-circuit/1206578.html

Pennington, G. (2010) AMC picks up 'Walking Dead' for Season 2 Retrived on April 18th 2011 from http://www.stltoday.com/entertainment/television/gail-pennington/article_38e970f8-eb7f-11df-a05c-0017a4a78c22.html

Reverse Confusion (n.d.) Reverse Confusion. Retrieved on April 19th, , 2011 from http://definitions.Reverse Confusion.com/r/reverse-confusion-trademark/
United States Patent and Trademark Office (2010). Office of the Administrator for Policy and

External Affairs: Well-known Marks [Webpage]. Retrieved on April 20th, 2011 from http://www.uspto.gov/ip/global/trademarks/ir_tm_marks.jsp

Scott, K, Straub, K, Kellett, D, and Guigar, B. (2008) How to Make Webcomics. Berkley: Image Comics

Trademark Infringement and Product Disparagement (n.d.) The Business Litigators Retrieved on April 20th from http://www.thebusinesslitigators.com/lawyer-attorney-1404046.html

Don’t Shoot Yourself With a Shooter: Make a Game to Pitch a Game

Full Sail Response for 05112011

Anon User

17votes by F. Randall Farmer, Ramprasad Rajendran, Perry Raghnall, (more)



The best way is to just make the game and launch it.

If your idea is any good, Zynga will copy it soon enough :)



4 Comments• 11:51 on Tue Oct 12 2010

That doesn't mean it will hire the developer :)...

Mircea Goia• 12:0 on Tue Oct 12 2010

lol, this made me laugh real hard. so true

Frank Abignale Jr.• 12:36 on Tue Oct 12 2010

It's exactly right. Zynga uses the market to surface which ideas to make. Why should they risk anything on original ideas, when the market will surface the good ideas? Then Zynga can bring their execution capabilities and distribution scale to win the market.

Michael Witz• 16:44 on Mon Jan 03 2011

And now they have the mass to make it successful way beyond what the initiator of the game is capable of...see Cityville.

Mircea Goia• 16:46 on Mon Jan 03 2011

(From: http://www.quora.com/How-do-I-pitch-a-game-idea-to-Zynga)



Bottom line is breaking in the game industry has become like breaking into the music industry or the comic book scene; meaning, a creator has to develop a free product, give it away for free, and for others in the industry to see a growing interest before giving any money to buy it or bring on a new team.



Unfortunately producing games like producing music requires a team because what I have noticed is it is teams who are brought into work for game companies who can bring in a growing IP (Intellectual Property). The independent team that worked on “System Shock 2” became the development team for “Bio Shock” which could be considered System Shock 3 spiritually (Remo, 2010). In this example, a team after proving their ability to create an interesting game and story was given the chance to develop their own IP.



However, we have to accept for fact that even though shooters may dominate the multi-million dollar console market, "Farmville" made more money than Madden and the Halo game franchises as of late (Villarreal, 2011). This means that cheap independent game developers can compete with the big boys. Think about it, programs like “Flash” or “Visual Basic C++” can give independents the ability compete with companies like EA, 2K Games, and Rock Star. Meaning, anyone can develop a game today that could be a hit. Thus, the best way to pitch a game is to make a game, and if it is really successful, a company more than likely will pick it up like Farmville.



As a person who can draw and create concept art on the spot and polish it with Photoshop, I’ve been putting myself out there as far as an "asset developer and game theorist" because I am a coder adept. Of course games still seem more a hobby, but I was working with someone who was developing a 2D engine. Unfortunately, because of time constraints we shelved the project. None the less, this is an example how a person can market their skills and find others they need to accomplish a mutual goal. The rest is just putting in the long hours together to make sure the game does what you want it to do.



Have Fun_ Zon



References:

Remo C (2010) Analysis: System Shock 2 - Structure And Spoilers

Retrieved on May,11, 2011 from http://www.gamasutra.com/php-bin/news_index.php?story=27684



Villarreal, P (2011) FarmVille, CityVille Are Bigger Than Madden, Halo Retrieved on May,11, 2011 from http://consumerist.com/2011/02/farmville-cityville-are-bigger-than-madden-halo.html

Should I Go to a Literary Agent? Full Sail Assignment Recap

The Independent Argument_ Kurtz and McCloud_

For the first two weeks of my media distribution class, I had to research and do work related to getting a book deal. Because, I’m trying to make my web comic project into a series of graphic novels, I realized a literary agent may be something valuable along with the classic go to cons and try and sell.

However, If you agree with Kurtz and his analysis of the newspaper cartoon strip as an industry (i.e. the funnies), then a creator will not see any profitability in trying to make the next "Garfield" or "Peanuts" to make a living. On the other hand, if you had a collection of strips and decided to a put a book together, a literary agent may help... finding a agent was something talked about when I took the McCloud class.


What do I need to get started?

1.) Enough content to fill a book (i.e. pages)



2.) A letter



3.) Additional Material asked by specific companies.
Usually this is a book packet. Check out the ref below…

Harvest Sun Press, LLC. (2007) Book Proposal Format Retrieved on May 10th 2011 from http://www.harvestsunpress.com/pdf/AGraphicNovelProposal.pdf


Should I Go to a Literary Agent?

Do you feel your work has a market but you feel you have tried everything to market it by yourself? Then yes, you should try a shop around for an agent. A good agent will only take projects they feel they can represent well, but bad agents will take your money and make you fill ill after a while.



It's still tuff to find a agent who can market your book?

The new trend seems to be you have to get the numbers or a book deal in progress before you can attract a literary agent. Case in point...



In this example, Kibuishi had two companies seeking his projects. The agent was needed to get the best deal for him; however, he already had many projects on the market as noted.

Where can I find a literary agent?

Niki Smith put a really great list of agents if you are interested.

http://niki-smith.com/about/graphic-novel-agents/

Thanks Niki, you made my homework all so easy.


Cheers_ Zon

POD's from FullSail Discussion Board

Sorry All,

In a effort to try and work ahead, because of editing time, I tried to set the last Sunday's update to auto, and thought it would post, but alas it didn't.

Here are some POD (Print on Demands) I supposed to look into for this last class.

CreateSpace
Blurb
Tate Publishing
Xulon Press
Outskirts Press
Xlibris
Lulu
Dog Ear Publishing
Wordclay
iUniverse
Infinity
AuthorHouse
Trafford Publishing

What’s a Strategic Partner?

Just like any quest you may have played, read or seen (i.e. Lord of the Rings or Harry Potter), Diane and I had to seek others with similar goals to put a conference together. Although the stakes are not as high, finding people to join a mutual cause is just as hard because it requires building a relationship and trust with almost complete strangers.

What’s a Strategic Partner?

When I was working in private ESL, the term meant another company that could give something for something in return that would mutually help them both. In other words, what free things can I give for free things I need? Yes, sometimes that’s money, but most times it’s services and time.

For example, you have an ESL program with students seeking a four-year degree, if you work with a four year University, then they may offer referrals for students interested in their school.

For conference planning: they are more involved and committed sponsors.

For Diane and myself, we are offering our expertise and design skills for sponsorship deals. I’m proud to say we have one official sponsor “Reverb” and are working on the next.

Why are these Partners so Important?

You can’t have a conference without three types of basic people, practitioners (i.e. creators), vendors, and of course attendees. Sponsors help your conference plan legitimize itself to attract these people and help the local city government you are dealing with realize you are very serious.

However in this sense, since strategic partners are more than just sponsors they should be willing to share resources with you (i.e. facilities, connections, information, etc.). Remember, the keyword is “share”; meaning, if there is nothing you can share, then you cannot develop a strategic partnership.

Also, aside from developing the legal agreements, what you are offering might take more out of you than you were willing to give. Thus, make sure whatever you are sharing doesn’t take too much of your own resources.

Guilt by Public Association

Sigh, the dark side of public association is simply the age-old concept of guilt by association. This is why the most important question I ask first is “how can I help or hurt your brand?” before committing myself to any project.

After I get a “yes”, I access the people in my network and theirs, and then go over how our brands mutually represent each other and if any possible “harm” would happen. This sounds paranoid but think of the risk.

For example, working on the Shaun White Toy project, Diane and I dealt with some of Shaun's negative press. LOL, this shows even if you get access to someone who has connections, their very success could hurt your brand.

This risk alone can hurt people’s image and ultimately cost them financial hurt due to branding issues. In one sense, you could be blacked balled from a support network that can grant you access to new fans or a new niche. Or worse, hurt your own niche market by affiliating with the wrong organization. A hypothetical would be eating a delicious “Jumbo Jack” at a PITA conference; or, a more real world example, Isaac Hayes “Chief” in South Park had to leave the show because of conflicts with the Church of Scientology (BBC,2006).

The moral of the story, analogous to dating, don't bring everyone you date to your parents as you don't publicly tell everyone you hangout with unless you feel they positively represent your brand or the reason for it is just.

3 Base Questions to Consider when Soliciting for Strategic Partners

1.) How can we help each other?
2.) Do we the time to work together?
3.) What are the risk involved?

Theses questions should lead to other questions and answers such as when and what type of legal agreement will happen over time.

Closing

So the brand I’m building with Diane Hyppolite is to help people achieve their goals. We're looking for strategic partners who I can safely say understand, except, and in their ways are actively trying to help others in their own ways in relationship to businesses they run.

@ All the Moms, Happy M-day.

Cheers Zon


References:

BBC News (2006) Retrieved on May 6 2011 from http://news.bbc.co.uk/2/hi/entertainment/4804334.stm