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The Right Stuff (Thorough Recordkeeping for Better Brand Protection)
Practical Law Legal Update 7-608-2425 (Approx. 4 pages)
The Right Stuff (Thorough Recordkeeping for Better Brand Protection)
by Practical Law Intellectual Property & Technology
| Published on 14 Apr 2015 • USA (National/Federal) |
A discussion of the importance of thorough recordkeeping to effective brand protection, with a focus on abandonment and the TTAB's recent decision in Ziebarth v. Del Taco, LLC. This Legal Update contains helpful links to Practical Law's brand protection resources.
A recent Trademark Trial and Appeal Board (TTAB) decision reminds practitioners that thorough recordkeeping is an important component of effective brand protection. In Ziebarth v. Del Taco, LLC, the TTAB cancelled Del Taco's registration of the NAUGLES trademark after finding that Del Taco had abandoned the mark (Ziebarth v. Del Taco, LLC, Cancellation No. 92053501 (T.T.A.B. Mar. 31, 2015)).
Del Taco, which had purchased the mark along with the rest of the Naugles restaurant chain's assets in 1988, asserted in its defense that it continued using the NAUGLES mark for restaurant services even after it stopped operating the Naugles restaurants in 1995. However, Del Taco was unable to support its use claims with sufficient evidence. Specifically, Del Taco:
- Alleged that it ran commercials advertising restaurant services under the NAUGLES mark, but produced no evidence of these promotional efforts.
- Claimed use of the NAUGLES mark on a menu that was entered into evidence, but had no records to establish the date that menu was used.
As a result, Del Taco lost valuable rights it had in the NAUGLES mark.
What to Keep and Why
As Del Taco learned, evidence of a mark's use is critical to responding to an abandonment claim. However, trademark owners should also collect and maintain relevant materials to support:
- Trademark registration and maintenance, for example, to submit:
- with applications, office action responses and statements of use;
- as proof of acquired distinctiveness under 15 U.S.C. § 1052(f); and
- with renewals and other maintenance documents such as Section 8 affidavits (15 U.S.C. § 1058).
- Enforcement efforts against third parties, for example, to establish a mark's:
- duration and geographic scope of use;
- priority of use;
- strength and recognition; and
- intended market.
Important materials to keep include:
- Representative samples of product packaging displaying trademarks.
- Representative samples of advertising and promotional materials displaying trademarks.
- Invoices, purchase orders and other sales records documenting the dates that trademarks were first used.
- Documents demonstrating sales of products or services under the trademarks.
- Market research showing consumer recognition of the trademarks, or the products or services associated with them.
Trademark owners must also organize these records in a way that ensures their effectiveness. For example, as seen in Ziebarth v. Del Taco, a specimen that cannot be linked to a date may not be useful. Trademark owners should maintain the records along with whatever background or contextual information is necessary to make them relevant evidence.
Free Webinar on Brand Protection
Thorough recordkeeping is just one component of a strong brand protection plan. For a detailed discussion of these and other strategies behind effective brand protection, including tips on how to keep a company's trademarks safe and how to help business and legal teams work together to maximize brand value, join us for a free 75-minute webinar, Brand Protection: Aligning Business and Legal Concerns on Thursday, April 23, 2015, at 1:00 pm ET.
This webinar covers:
- Best practices for proper trademark use.
- How to avoid weakening or even losing trademark rights.
- How and when to use trademark notices like ® and tm.
- What should be included in a company's or client's brand identity standards.
- Strategies for fostering collaboration between marketing and legal departments.
For more information, including a list of states in which CLE credit is available, visit the registration page.
For a collection of resources designed to help counsel identify and manage the acquisition, protection, licensing and enforcement of trademarks and other brand assets, see Brand Protection Toolkit. For sample internal guidelines for use in educating company employees on how to use and protect company trademarks, see Standard Document, Trademark Use and Protection Guidelines (Internal Distribution).