Last week I was fortunate to attend the Managing the Trademark Asset Lifecycle Conference, hosted by World Trademark Review.  The topics discussed throughout the day touched on everything from assessing portfolio strength and valuation to leveraging the financial value of a brand.  Although it is impossible to touch on all the points covered during this full-day conference, there were several high-level takeaways worth sharing.

  • The Three F’s of Intellectual Property Audits: Foresight, Fluidity And Flexibility. As with many facets of corporate life, too many companies wait to audit their Intellectual Property (“IP”) until the need arises.  This approach often leads to unnecessary scrambling, stress and lost opportunities.  Rather than taking a defensive or reactive approach to auditing, companies should think proactively, instituting budget-appropriate processes whereby data is routinely collected and maintained in accessible form.
  • Getting Rid Of The “IP Department” Mentality. One of the biggest mistakes a company can make is to limit the involvement of in-house IP counsel or the portfolio management team in the day-to-day management of the company.  IP affects all aspects of the company, from marketing and sales to international tax and finance, and IP counsel should be involved in all meetings where such issues are being discussed.
  • In-House Counsel As Brand Ambassadors and Educators. IP counsel and portfolio managers should be acting as brand ambassadors, not enforcement agents.  Although there may be instances where reactive steps must be taken, every effort should be made to continuously and positively educate company personnel regarding the use and importance of IP which, at the same time, should create additional enthusiasm regarding the brand.
  • The New IP Portfolio: Not Your Grandparents’ IP. Although obvious to some, companies need to recognize that IP is no longer simply about trademark and copyright registrations.  IP touches all aspects of a company’s public persona, from its customer lists and goodwill to its website, internet domains/extensions, and social media handles.  These valuable assets can no longer be ignored.
  • Attorneys As Revenue Generators: Help Me Help You. Attorneys are often brought in when an issue arises (the reactive/defensive approach).  However, IP attorneys are uniquely equipped with the insight and experience to add value and identify potential opportunities that may be overlooked by corporate decision-makers.  IP attorneys cannot identify opportunities if they remain in the dark as to the day-to-day operations and goals of the company.  Taking time to brainstorm with counsel is an investment worth making.
  • Adjusting To The Times: The Evolution of a Brand. Companies that refuse to recognize change or are resistant to evolving their brands will be left behind.  One great example came from Colm Dobby, Associate General Counsel for Mastercard Inc., who discussed the evolution of the “Master” brand in light of the fact that “Cards” are no longer the only or preferred mechanism to purchase goods and services with credit.
  • Beware Of Domain-Driven Branding. The Internet has revolutionized the way companies market and sell their goods and services.  As a result, many companies now consider an Internet domain more important than the overall brand itself.  In some cases, companies will look to the availability of a particular domain when considering a new brand.  Others have initiated a process of buying up all potentially similar domains (and domain extensions) to discourage others from building a brand based solely on the availability of a particular domain.  Although domains are undeniably important, companies should not be blind to other considerations when analyzing the strength of a brand.

Whole Foods recently garnered attention when its trademark application for World’s Healthiest Grocery Store was rejected by the U.S. Patent and Trademark Office.  The trademark examiner focused on the “World’s Healthiest” part of the proposed mark and found the phrase simply described an alleged benefit of Whole Foods’ products, rather than indicating a source of the products.

Descriptive terms, like “healthiest” or “best,” cannot serve as trademarks without some showing that the term has acquired a secondary meaning of being distinctively associated with a particular source.  That is, a term that describes a quality of a product is used on a particular company’s products so much that the term becomes more widely recognized as indicating the source rather than describing the quality.  An example is American Airlines®.  In Whole Foods’ case, the Trademark Office left the door open for the grocery store to try to develop secondary meaning in its proposed mark by registering it on the so-called Supplemental Register.

Some commentary on Whole Foods’ rejection was focused on whether the assertion by Whole Foods – that it was the World’s Healthiest Grocery Store – was true.  The Trademark Office did not analyze the truth of the proposed mark because World’s Healthiest was viewed as a form of “puffery” or a “laudatory” statement.

Sometimes assertions boasting of characteristics like this must be true, other times not.  What is required under the circumstances is largely determined by how consumers are expected to react to it.  A statement will usually not require proof if it is just a broad claim of superiority that can only be interpreted as an opinion.  In contrast, a statement that is deemed “deceptive” will be barred from registration entirely.  The Trademark Office distinguishes between statements that are merely expressions of opinion from, for example, statements that would induce a consumer’s purchasing decision.  Phrases that are viewed as potentially influencing a purchasing decision includes words that indicate a product characteristic like superior quality, better pricing, societal beliefs (an example of which is the term “vegan”) or, as in the case at hand, phrases indicating a health benefit.  One example that falls in a few of these categories is “organik,” which was found to be deceptive when used on clothing made from cotton that was neither organically grown nor free of chemicals.  In re Organik Technologies, Inc., 41 U.S.P.Q.2d 1690 (TTAB 1997).

From the perspective of choosing a mark for use in your business, the characterization of a phrase like “World’s Healthiest Grocery Store” affects more than just whether a trademark can be obtained.  Such phrases can also run afoul of advertising guidelines set industry organizations, or even result in claims by the FTC.  The National Advertising Division of the Better Business Bureaus (NAD) has guidelines for determining whether a statement is acceptable puffery, rather than an improper claim.  In one NAD case, NAD found the claim that a baby food uses “the best ingredients nature has to offer” was acceptable puffery, but claims that implied conventional, non-organic baby food products were less nutritious should stop (such as, “some studies show that organic product contains more antioxidants…”).

With the Whole Foods’ claim to being the “World’s Healthiest,” the Trademark Office apparently was not concerned about what it viewed as general boasting.  Or, as the FTC might say, it’s okay to talk smack, just as long as it is an obvious exaggeration.

One of the overlooked issues of Britain’s decision to leave the European Union is the implications of “Brexit” on the rights afforded to individuals and entities holding European Union trademark and design registrations (a/k/a “EU Community Registrations”).  The EU Community Registration process has become favored by many trademark owners across the globe for a number of reasons, the most obvious being the ability to obtain protection in all EU member states with a single application (and the corresponding reduction in fees and costs).  It is expected that legislation will be passed to protect those who have obtained UK trademark protection by virtue of their EU Community Registration, although the logistics of any transfer from the European Union Intellectual Property Office to the UK Intellectual Property Office is yet to be determined (for example, will the registration automatically transfer, will a streamlined application process be necessary, and how will priority be determined).  With the UK’s formal departure from the EU expected to take some time, there should be no immediate concern, although trademark owners should continue to follow the issue closely to ensure continuity of protection through this transition.

After less than a day of deliberation, a California jury has found the members of the legendary group Led Zeppelin (and their record label) did not copy the famous opening riff of Stairway to Heaven from an earlier song by the band Spirit.  Applying basic copyright principles, the jury found that while Jimmy Page and Robert Plant may have heard Spirit’s song Taurus before composing the opening of Stairway, the songs were not “substantially similar.”

The verdict contrasts with another recent high-profile copyright infringement case in which a California jury found that Pharrell Williams, Robin Thicke and Clifford Harris infringed Marvin Gaye’s classic Got to Give it Up when writing Blurred Lines.  The Blurred Lines jury rejected similar defense arguments that the songs were not “substantially similar.”  (A previous blog on the Blurred Lines verdict can be found here.)

The two cases illustrate the fact-sensitive and often unpredictable nature of the “substantial similarity” test.  What remains certain, however, is that successful artists will continue to be challenged on the provenance of their works, even long after those works first topped the charts.

On May 11, 2016, President Obama signed into law the Defend Trade Secrets Act of 2016 (“DTSA”), which has been widely hailed as the “most significant expansion” of federal intellectual property law since the passage of the Lanham Act 70 years ago. This post provides a brief overview of the DTSA and discusses the provisions most likely to impact businesses and trade secret owners.

      a.  Summary

The DTSA amends the Economic Espionage Act, 18 U.S.C. §§ 1831 et seq. (the “EEA”), to create a private civil cause of action for trade secret misappropriation. As stated in the official summary of the DTSA, under the new law “[a] trade secret owner may file a civil action in a U.S. district court seeking relief for trade secret misappropriation related to a product or service in interstate or foreign commerce. The bill establishes remedies including injunctive relief, compensatory damages, and attorneys’ fees. It sets a three year statute of limitations from the date of discovery of the misappropriation.” (Summary: S. 1890 – 114th Congress (2015-2016), at Sec. 2.) Although closely aligned with the Uniform Trade Secrets Act (“UTSA”), adopted in some form by every state except New York and Massachusetts, the DTSA explicitly does not preempt preexisting state laws protecting trade secrets. (See 18 U.S.C. § 1838.)

Other provisions of the DTSA (not discussed in this post), require “the Department of Justice [to] submit to Congress and publish a biannual report on trade secret theft outside the United States” and the “Federal Judicial Center [to] develop, update, and submit to Congress best practices for seizing information and securing seized information.” (Id., at §§ 4, 6.)

     b.  Ex Parte Seizure

One of the more controversial provisions of the DTSA empowers a district court “upon ex parte application but only in extraordinary circumstances, [to] issue an order providing for the seizure of property necessary to prevent the propogation or dissemination of the trade secret that is the subject of the action.” (18 U.S.C. § 1836(b)(2)(A)(i).)

Although seizure might be an invaluable remedy to a trade secret owner, to obtain it they must meet a high burden, both factually and financially. As the text makes clear, ex parte seizure will be granted “only in extraordinary circumstances” and the requesting party must also provide security for the payment of damages resulting from wrongful, excessive, and even attempted seizure. (Id. at § 1836(b)(2)(A) and (B) (setting forth requirements for issuing seizure order and listing required elements of seizure order itself).) If the requirements are met, however, “[a]ny materials seized … shall be taken into the custody of the court” pending a hearing that must be scheduled within seven (7) days or “at the earliest possible time”. (See 18 U.S.C. § 1836(b)(2)(B)(v) (emphasis added).)

     c.  Damages

The DTSA increases the maximum penalty for trade secret theft (currently $5 million) to the greater of $5 million or 3 times the value of the stolen trade secret. A court may also award “exemplary damages” (triple damages and/or attorneys’ fees) upon a finding that the trade secret was “willfully and maliciously misappropriated”. (See 18 U.S.C. § 1836(b)(3)(B).) A variety of other remedies are available under the DTSA, including “an injunction to prevent any actual or threatened misappropriation” and, “[i]n exceptional circumstances that render an injunction inequitable,” the court may condition future use of the trade secret(s) upon the payment of a reasonable royalty. (See 18 U.S.C. § 1836(b)(3)(A)-(B).)

     d.  Whistleblower Immunity and Notice Requirement

The DTSA includes a whistleblower immunity provision that grants civil and criminal immunity “under any Federal or State trade secret law for the disclosure of a trade secret that (A) is made (i) in confidence to a Federal, State, or local governmental official, either directly or indirectly, or to an attorney; and (ii) solely for the purpose of reporting or investigating a suspected violation of law; or (B) is made in a complaint or other document filed in a lawsuit or other proceeding, if such filing is made under seal.” (18 U.S.C. § 1833 (b)(1)(A)-(B).)

Businesses and trade secret owners should familiarize themselves with these provisions of the DTSA because “[i]f an employer does not comply with the [whistleblower immunity and] notice requirement…, the employer may not be awarded exemplary damages or attorney fees … in an action against an employee to whom notice was not provided.” (18 U.S.C. § 1833(b)(3)(C).)

     e.  New Definitions (And Some Old Ones, Too)

The EEA’s definition of “trade secret” remains unchanged under the DTSA, which adds definitions for, among other things, “misappropriation” and “improper means” that are similar to those found in the UTSA. (See 18 U.S.C. § 1839(5)-(6) (defining “misappropriation” and “improper means,” respectively).) A key distinction, however, is that unlike the UTSA, the DTSA expressly exempts reverse engineering and independent derivation from its definition of “improper means.” (See 18 U.S.C. § 1839(6)(A)-(B).)


     Trade secret owners and employers desiring to protect their valuable intellectual property rights should familiarize themselves with the DTSA. Although it is, in many respects, substantially similar to the UTSA already adopted by a majority of states, the remedies afforded under the DTSA – ex parte seizure of assets, treble damages and attorneys’ fees – will likely incentivize parties to file suit in federal court. Critically, however, the panoply of remedies under the DTSA is not available to an employer/trade secret owner that fails to incorporate a proper whistleblower immunity notice into their agreement with the misappropriating party. Employers and trade secret owners faced with the threat of misappropriation should be certain to incorporate a proper immunity notice in their confidentiality and trade secrets agreements with employees and contractors.