Thursday, December 04, 2008
KONA COFFEE TRADEMARKS 101
"KONA COFFEE TRADEMARKS 101:
Selection, Clearance & Registration"
*by William E. Maguire, Esq.
LAW OFFICES OF WILLIAM E. MAGUIRE
Los Angeles, California
Anyone visiting Kailua-Kona on the Big Island of Hawaii would be pleasantly surprised by the number of coffee industry trademarks on display, e.g., KONA JOE®, HAWAIIAN KONA CAFFE®, ROYAL KONA®, MAUNA LOA®, HULA DADDY KONA COFFEE®, just to name a few. This is especially true during the annual Kona Coffee Cultural Festival. With respect to such Java trademarks and service marks, this article will briefly introduce the readers to the fundamental aspects of trademark law.
A trademark (or mark) is defined as any word, symbol, slogan, or device (such as a design), or a combination of them, used by a manufacturer or merchant to identify his goods or services and to distinguish them from those manufactured, sold or serviced by others. HAWAIIAN KONA CAFFE® and KONA JOE® are excellent examples of 'word' marks. An example of a slogan mark is FROM FARM TO CUP® for coffee. In the village of Kailua-Kona, an example of a coffee-related service mark is ISLAND LAVA JAVA™ for retail store and restaurant services featuring coffee. Other coffee related service marks include KONA JOE® for both food vending services and restaurant services. Thus, the example of KONA JOE® illustrates that the same mark can function as both a trademark and service mark. Service marks are used typically through advertising and promotion, whereas trademarks are used on labels typically in connection with goods.
In the U.S., trademark rights are acquired through use (e.g., by selling or transporting your product in commerce with the mark attached or on a label). In addition, under certain circumstances "color" can be a trademark. Examples outside the coffee industry are the color "pink" for fiberglass insulation and "green" for dry cleaning pads. With respect to the coffee industry, this writer is unaware of any company taking advantage of this opportunity to use color as a trademark.
SELECTION AND CLEARANCE
The selection of a trademark is the first step that a merchant undertakes to create an identity for his/her brand of coffee and related merchandise, e.g., apparel, ceramic mugs, etc. The clearance of a trademark is the process of determining whether or not the trademark is available and is not being used by someone else as a trademark. This clearance process cannot be overemphasized in its importance. Ignoring this vital step can lead to a multitude of problems and expense. In the clearance of a trademark, a two-step process is suggested. The first step is to conduct an on-line internet trademark search of the mark. This on-line search is further clarified by identifying the goods sought to be used or sold as trademarks are categorized by classification. In the United States, the federal government has adopted the International Classification system. Coffee and tea are in Class #30. Toys, sporting goods, swim fins and surfboards are in Class #28. T-shirts and related apparel and clothing are in Class #25. Ceramic mugs and beverage ware are in Class #21. Gear bags, backpacks, fanny packs, etc. are in Class #18. Posters, magazines, books, trading cards, and other printed matter and publications are in Class #16, e.g., Coffee Times™. Videotapes, audiotapes, dvd's, cd's and business software are in Class #9. Therefore, if you are planning to sell coffee, t-shirts and ceramic mugs, then you will want to conduct an on-line search of Classes # 30, 25 and 21. The registered trademark, KONA JOE®, is a good example of a trademark registered for coffee mugs, shirts, t-shirts, as well as coffee and coffee beans. And MAUNA LOA® is a registered trademark in Class #30 for such goods as "brownies, coffee, cookies, cake, candy, chocolate covered macadamia nuts, etc".
The on-line search is often called a "knock-out" search. This is because the on-line search is a quick and relatively inexpensive way to determine if the mark is already being used. These on-line searches are often available at public libraries, commercial search firms, via the internet, and law firms. If your mark appears free of conflicts after conducting an on-line search, the next level of search is the Full Search, which is obtained from commercial search firms. The Full Search will search the Federal database of trademarks at the U.S. Patent and Trademark Office (USPTO), State trademark registrations, and common law sources such as phone directories, domain name registrations, and Dun & Bradstreet listings. If your mark still appears clear of conflicts after a full search, then you can be fairly certain that you can adopt and start using your mark. CAVEAT: These searches are not guarantees of the absence of conflicting marks, but they do allow a merchant to make a more informed decision in the clearance of a trademark. Also, if you are planning on having an internet domain name registered incorporating your trademark, then you will be well advised to do so just as soon as possible. In addition, it is also advised that you first check to make sure that the domain name that you want to use is available. Checking on the availability of a domain name is today certainly a common and simple task that can be performed on the world wide web.
FEDERAL TRADEMARK REGISTRATION
To obtain maximum protection, it is best to register your trademark or service mark. In the U.S., your greatest rights can be obtained with a federal trademark registration. If you are only conducting business within one state, e.g., Hawaii, it is possible to register your mark with the Dept. of Commerce and Consumer Affairs, Business Registration Division, in Honolulu (x-ref: http://hawaii.gov/dcca/areas/breg/ ). California, as well as other states, have similar opportunities for the registration of trademarks on a state level. However, if it is your intent to do business across state lines or in foreign commerce (or if you are already doing business across state lines or in foreign commerce), then the prudent thing to do is to file for a federal trademark application with the USPTO located in Alexandria, Virginia. Applications can now be submitted on-line via the internet at http://www.uspto.gov/main/trademarks.htm. This task is not necessarily a simple one in spite of the USPTO's preference for on-line filing and one must concentrate and exercise prudence, patience and skill in completing this process. An experienced trademark lawyer will likely benefit the Applicant's opportunity for successful registration.
An application for registration of a trademark must be filed in the name of the owner of the mark. The applicant must submit: (a) an application; (b) a drawing of the mark; (c) the required filing fee (which is approximately $325 per mark per class at this time). The applicant will also incur attorneys fees, typically a fixed fee, should an attorney be hired to file the application(s). As previously discussed, trademarks registered with the Federal Government are categorized by a classification system which correspond to the type of goods sought to be registered.
After the mark is registered in the U.S., it is important to give notice of this fact by placing the registered trademark symbol, "®", adjacent to the mark. Prior to registration, it is also advisable to use the symbols, "TM" (for trademarks) and "SM" (for service marks).
The chief advantages of a federal registration include:
1. "Constructive Notice" nationwide of the registrant's claim to ownership of the mark. This basically eliminates the good faith defense of an infringer who claims to have lacked actual knowledge of the registered mark.
2. Registration is also evidence of (a) the validity of the registration; (b) the registrant's ownership of the mark; and (c) the registrant's exclusive right to use the mark in commerce in connection with the goods or services.
3. Registration also entitles the registrant to (a) file a lawsuit for infringement of the mark in Federal Court; (b) prevent importation of goods bearing an infringing mark; and (c) use the registration as a basis for registering the same mark in certain foreign countries.
Trademark registrations are valid for 10 years subject to certain use and filing requirements, and are renewable every 10 years, also subject to continued use and renewal filing requirements.
FOREIGN TRADEMARK REGISTRATION
If your product is distributed internationally, then you must, by and large, register your mark(s) in each country where you plan to do business or are doing business. Is this expensive? Yes! On the other hand, the alternative is the potential loss of the ability to sell your product in those countries where a third party has filed a prior application for your mark(s). Therefore, foreign trademark protection is typically obtained on a country-by-country basis. Unlike the U.S., however, trademark rights in many foreign countries are obtained by registration rather than use. This further necessitates the importance of filing for marks in foreign countries as soon as possible.
One notable alternative to the typical practice of registering trademarks on a country-by-country basis is the European Community Trade Mark Application (x-ref: www.oami.europa.eu ) which has been available since January 1, 1996 for the filing of applications. By obtaining a Community wide trademark registration, an owner of a U.S. registered trademark, for example, can potentially save both time and money otherwise invested in registering a mark in each separate European country and can thus hopefully attain maximum protection for its trademarks in overseas markets at a minimum of cost. An additional and separate registration option is that offered by the Madrid Protocol, an international treaty that the United States belongs to and enforces. The details of this treaty, however, are beyond the scope of this article (x-ref: http://www.wipo.int/treaties/en/registration/madrid_protocol/ ).
Whether you are selling products or services, it is very important to be aware of your trademark and/or service mark and their value. In a competitive business environment, the potential for economic loss is tremendous if trademark rights are not acquired, evaluated, protected and maximized. While this article does not portend to cover all the intricacies of trademark law, hopefully it has helped to shed some light on this area of the law which is of paramount importance to the business owner.
*William E. Maguire has been a member of the California bar since 1981, has an LL.M degree in Intellectual Property, and was previously Senior Counsel for Malibu Comics Entertainment, Inc., a subsidiary of Marvel Entertainment Group, Inc. He has also served as outside trademark, copyright and licensing counsel for The Baywatch Production Company. He is currently in private practice in West Los Angeles where he concentrates on trademark, copyright and licensing matters, and represents clients in the entertainment, publishing, interactive, toy, sporting goods, restaurant, coffee, cigar and apparel industries.
William E. Maguire, Esq.
LAW OFFICES OF WILLIAM E. MAGUIRE
11500 W. Olympic Blvd., Suite 400
Los Angeles, CA 90064-1525
Phone 310.470.2929 and 312.4525
Fax 310.474.4710 and 312.4560
Trademark * Copyright * Licensing