3 TRADEMARKING AND LICENSING FOR TRANSIT PROVIDERS By Radhika Raju and Jaylene Sarracino Raju & Sarracino, L.L.C. Washington, DC INTELLECTUAL PROPERTY IN GENERAL INTRODUCTION There are four different types of intellectual property: Transit officials need to understand the basics of patents, copyrights, trademarks, and trade secrets. The trademark protection and how to create revenue by idea of encouraging technological progress is included licensing intellectual property holdings. Prevention of in the U.S. Constitution. Article I, Section 8, reads in misappropriation and loss of control over an agency’s part, “The Congress shall have Power…to promote the trademarks is something of immediate interest to the progress of science and useful arts, by securing for lim- transit industry. An article in the Washington Post ited times to authors and inventors the exclusive right publication, Express, June 7, 2004, illustrates the to their respective writings and discoveries.” trademark issues faced by the Texas Department of Both patent and copyright laws stem from this Transportation when it neglected to register its anti- clause, while trade secret protection arises from the litter slogan “DON'T MESS WITH TEXAS.” It became right of businesses to protect confidential information apparent that the department had missed an opportu- and is state regulated. nity to earn revenue on the licensing of the slogan when Trademark law arises from the government’s author- unrelated parties began to print it on T-shirts, caps, ity to regulate commerce among the states and with and other souvenir items. Several years later, the de- foreign nations. In the U.S. Constitution, Article I, Sec- partment obtained a registration with the United tion 3, the “Commerce Clause” grants authority for States Patent and Trademark Office (USPTO or regulating commerce and reads in part, “To regulate Trademark Office) and began to protect its slogan by Commerce with foreign nations and among the several sending the infringers “cease and desist” letters that States….” Federal jurisdiction over trademarks only warned of litigation if they did not stop the unauthor- applies to marks used in interstate commerce. The rea- ized use of the slogan. son why many states also register trademarks is to By perfecting its rights by filing for, and later ob- have jurisdiction over intra-state commerce. taining, a federal trademark registration and by de- A trademark can be any word, name, symbol, or de- fending against misuse by third parties, the Texas De- vice, or combination of these, used or intended to be partment of Transportation created the foundation for a used, in commerce. Trademarks indicate the source of revenue asset stream. goods or services.1 A service mark similarly can be any The purpose of this report is to guide the intellectual word, name, symbol, or device, or any combination of property novice through the process of protecting these that are used or intended to be used in commerce. trademark assets. The report begins with an overview Trademark2 registrations are indefinitely renewable of the statutory and regulatory framework that allows and in essence may last forever, as long as the trade- for trademark ownership. This is followed by instruc- mark is continually in use to identify goods in com- tions on how to prepare, file, and prosecute a trademark merce. application at the federal level. This includes details for Trademarks have three very important functions: to electronic filing, references to forms, examples of verbi- protect the trademark owner’s efforts to associate the age, and information on government fees. Also pre- trademark with goodwill and reputation, to protect con- sented are overviews regarding post-registration con- sumers from confusion as to the source of goods that cerns and registering trademarks at the state level. they purchase, and to indicate that all goods sold under Details on current USPTO policy and procedures along the same mark have the same level of quality. Trade- with practical advice are interspersed throughout the marks do not need to be just words. They can be any- report. For completeness, shorter sections explain the thing that identifies source. For example, Trademark Trial and Appeal Board (TTAB), Trademark Office organization, and international (Madrid Protocol) 1. Letters, such as VTA;3 filings. An entire section explains licensing of trade- mark assets and relevant provisions to include in a li- censing agreement. The report concludes with an ap- pendix of online resources. 1 The term “goods” will encompass both goods and services. 2 The term “trademark” or “mark” will encompass both trademarks and service marks. 3 U.S. Reg. No. 2168418. Registrant: Santa Clara Valley Transportation Authority. Services: transportation of passen- 4 2. Numbers, such as 123 TRANSIT; Descriptive marks are terms that identify a purpose, 3. Slogans, such as DO THE RIDE THING!;4 function, characteristic, or feature of the goods. For instance, the mark SAN DIEGO TRANSIT6 is descrip- tive for transit services because the mark immediately 4. Designs, such as describes the location and the services. Descriptive terms are registrable if the applicant can show that the term has acquired distinctiveness, meaning that con- 5. Color, such as the pink color of Owens Corning’s sumers recognize the mark as identifying a single insulation; source. The more descriptive the term, the greater the 6. Product shape or product container shapes, such as evidence the applicant must proffer to show acquired a bus ticket shaped like a bus; distinctiveness. 7. Building appearances, such as the shape of a Pizza Generic terms are basically the very name of the Hut roof; goods and cannot ever acquire distinctiveness and func- 8. Sounds, such as the chimes used by NBC for tion as trademarks and are therefore unregistrable. For broadcasting; and example, SHOE for selling shoes. Generic terms must 9. Fragrance, such as the smell of plumeria blossom remain in the public domain because they tell the con- for thread. sumer what the goods are and cannot indicate source. For example, GAS STATION for gasoline stations or LANHAM ACT MOTOR OIL for motor oil would never be allowed. If a registered trademark is not properly policed, it can be- 5 The Lanham Act provides the legal framework for come generic and is therefore no longer protectable un- seeking a federal registration for a trademark at the der the Lanham Act. For instance, ASPIRIN was once a USPTO and describes the penalties for trademark in- registered trademark, but now has become the generic fringement. The Trademark Manual of Examining Pro- name for a certain type of painkiller. Similarly, cedure (TMEP), used by both USPTO application ex- SUPERGLUE was a registered mark but has now be- aminers and private trademark practitioners, is the come generic for a certain type of glue. most comprehensive guidance for preparing, prosecut- ing, and maintaining a trademark application or regis- TYPES OF MARKS tration at the USPTO. It is an invaluable source for responding to “Office Actions” or official correspondence Marks at the Trademark Office fall into three differ- from the USPTO. It is available and searchable online ent categories. First, trademarks, as discussed above, at http://www.uspto.gov/web/offices/tac/tmep/. can be words, letters, designs, combinations of words or letters, color, product shape, sounds, etc., and indicate SPECTRUM OF MARKS that the goods come from a particular source. Second, trademarks can be collective marks, used by Marks are either inherently distinctive or non- the members of a cooperative, an association, or other inherently distinctive. Inherently distinctive marks are collective groups to indicate that particular goods come marks that are fanciful or coined, arbitrary or sugges- from a member of the applicant’s organization or that tive. Non-inherently distinctive marks include descrip- the user of the mark is a member of the applicant’s or- tive marks, generic terms, name marks, and geographic ganization, such as the mark INTERNATIONAL marks. BROTHERHOOD OF TEAMSTERS for the transporta- Fanciful or coined marks are terms that have no tion, maintenance, and handling labor union.7 meaning but to function as a trademark and indicate Third, trademarks can also be certification marks origin of goods. Examples include marks like PEPSI for used by persons other than an owner to certify: soda pop, EXXON for gas station services, and KODAK for cameras. Arbitrary marks are terms that are com- 1. Regional or other origin of the goods or services; mon words but are not related to the goods. For exam- 2. Material, mode of manufacture, quality, accuracy, or ple, APPLE for computers and PUMA for shoes. Sug- other characteristics of the goods or services; gestive marks suggest a quality, feature, or 3. That the work or labor on the goods or services was characteristic of the goods, but require imagination or performed by members of a union or other organization. an additional step in logic to determine what the mark conveys about the goods. An example is EVEREADY for The purpose of certification marks is to inform pur- batteries. chasers that the goods of a person possess certain char- acteristics or meet certain qualifications or standards gers and their incidental baggage by bus, van, rail, and other established by another person. The message conveyed multi-passenger ground vehicles. 4 U.S. Reg. No. 2338108. Registrant: Des Moines Metropoli- tan Transit Authority. Services: transportation of passengers 6 U.S. Reg. No. 2180474. Registrant: San Diego Metropolitan by bus. Transit Development Board. Services: transportation of pas- 5 Pub. L. No. 79-489, 60 Stat. 427 (1946) (current version at sengers by means of bus. 15 U.S.C. § 1051 (2005)). 7 U.S. Reg. No. 1994996. 5 by a certification mark is that the goods have been ex- initial territory regarding use and intent is by filing a amined, tested, inspected, or in some way approved U.S.