Trademarks and Technology Licensing What You Need to Know The Only Government-wide Forum for Technology Transfer William S. Gardiner Office of the Assistant Secretary of Defense (PA) (703) 738-2518 gardinerb@stripes.osd.mil
WILLIAM S. (BILL) GARDINER Program Coordinator, DOD Branding and Trademark Licensing Program Intellectual Property Counsel, Stars and Stripes, Office of the Assistant Secretary of Defense (PA) Served as Military Counsel, U.S. Army Intellectual Property Law Division, Judge Advocate General s Corps Army Served as Senior Vice President and General Counsel, The Curtis Publishing Company Over 30 years experience in the registration and licensing of intellectual properties 2
TRADEMARK DEFINED 15 U.S.C. 1051 TRADEMARK: A trademark is a word, phrase, symbol or design, or combination of words, phases, symbols or designs, which identifies and distinguishes the source of goods or services of one party from those of another COPYRIGHT: A copyright protects an original artistic or literary work NOTE: Designs like the Stryker Brigade insignia could be protected both by a copyright and a trademark 3
REGISTRATION AND PROTECTION Copyrights v. Trademarks TRADEMARK: The term "person" also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. 15 U.S.C. 1127 COPYRIGHT: Copyright protection under this title is not available for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise. 17 U.S.C. 105 4
WELL-KNOWN CORPORATE TRADEMARKS 5
DOD TRADEMARKS ARMY STRONG BLUE ANGLES 6 6
MOST COMMON CLASSES OF TRADEMARK REGISTRATION There are about 47 different classes of goods and services } Class 09 Computer Software Class 16 Prints and Publications Class 21 Mugs and Glasses Class 25 Clothing Class 35 Retail Sales Class 41 Education and Entertainment Class 42 Computer and Scientific Class A Certification Mark (Goods) Class B Certification Mark (Services) Goods } Services 7
INTERNATIONAL CLASS 41- EDUCATION AND ENTERTAINMENT Service Mark Providing online computer games Entertainment in the nature of computer gaming contests 8
INTERNATIONAL CLASS 42- COMPUTER AND SCIENTIFIC Owner: U.S. Department of Energy Use: Laboratory research Laboratory research in the field of basic science, environmental management, and national security; research and development and consultation related thereto in the field of basic science, energy resources, environmental management, and national security; scientific research; scientific research and development 9
INTERNATIONAL CLASS 42- COMPUTER AND SCIENTIFIC (Cont.) Engineering services, namely, design and testing of aircraft, weaponry or aviation support equipment for others; computer services, namely, providing online technical and engineering information in the field of aviation EA-18G Growler 10
Joint Tactical Radio System CERTIFICATION MARK PROGRAMS Inform purchasers that the goods or services of a person possess certain characteristics or meet certain qualifications or standards established by the owner of the certification mark A certification mark does not indicate origin in a single commercial or proprietary source JTRS uses its certification mark to certify that radios or radio components meet DOD standards 11
INTERNATIONAL CLASS A CERTIFICATION MARK - SOFTWARE ADL : Computer software, namely, Internet-based educational courseware management software used exclusively by the federal government, private-sector technology providers, and the education and training community for standardization of course content in the field of distance learning 12
REASONS FOR SECURING TRADEMARK REGISTRATION Trademark Act protection should be considered as a means of preventing unwanted exploitation by commercial entities of trademarks and phrases developed and funded by the Army (AR 27-60, para 4.7) Assuring product quality through licensing Avoid suits for trademark infringement 13
Waiver of sovereign immunity by the United States U.S. GOVERNMENT LIABILITY The United States, all agencies and instrumentalities thereof, and all individuals, firms, corporations, other persons acting for the United States and with the authorization and consent of the United States, shall not be immune from suit in Federal or State court by any person, including any governmental or nongovernmental entity, for any violation under this chapter. (Emphasis added) 15 U.S.C. 1122 Screenshot of the U.S. Disciplinary Barracks From the America s Army Game 14
BIG DEAL SO WHY SHOULD I CARE? AMERICA S ARMY GAME Trademark license tied in with computer software license Royalties in FY 07 exceeded $1.3M Trademark has value solely because of the value of the game software and the publicity it has received www.americasarmy.com 15
TRADEMARK LICENSE VS. PROCUREMENT In trademark licensing, FAR and DFARS generally do not apply A license is not a procurement because there is no payment made to the contractor/licensee 16
THE PROBLEMS WITH HOOAH! Hooah Bar developed at Natick Labs* in 1995 Registered in 1998 as a food, namely, candy bar, for increasing energy Today Army has two registered trademarks on Hooah * Natick Labs research, develop and sustain food, clothing, shelter, airdrop systems and soldier support items. Created by the U.S. Military Try All 3 Flavors: Chocolate Crisp Apple Cinnamon Peanut Butter (Part of advertisement) 17
TRADEMARK APPLICATIONS FILED BY D ANDREA BROTHERS, LLC HOOAH CLASS GOODS/SERVICES 16 Periodical publications, namely general interest magazines 41 Production and distribution of television programs and motion pictures 42 Computer services, namely, operating a blog website 06 Metal badges, key chains, metal identification tags (dog tags) 08 Folding knives 16 Postcards, greeting cards, playing cards, decals, bumper stickers, flags 14 Watches, jewelry, belt buckles, commemorative coins 21 Drinkware, glassware 20 Sleeping bags 22 Tents 05 Adhesive bandages ARE YOU HOOAH? 25 Hats, shirts, pants 42 Computer services, namely, operating a blog website 18
STANDARD TERMS OF ARMY LICENSING AGREEMENT Logo Licensing: License limited to specific logos Royalty: 5% to 10% Quality Assurance: DA approves all product before being sold Duration of License: T for C on 60 days notice Warranty: No warranty of ownership of trademarks Warranty limited to DA defending infringement action 19
TRADEMARK APPLICATION PROCESS Applicant: U.S. government agencies can apply for and own trademark registrations (15 U.S.C. 1127) Type of Applications 1(a) Use Based 1(b) Intent-to-Use Application fees start at $275/class Normal processing time is 1 year from date of filing Consider international trademark application 20
KEEPING THE MONEY Statutory Authorization 21
MISCELLANEOUS RECEIPTS ACT 31 U.S.C. 3302 Custodians of Money Except as provided by another law, an official or agent of the United States Government having custody or possession of public money shall deposit the money without delay in the Treasury Statutory Exceptions CRADAs (15 U.S.C. Sec. 3710a) Federally owned inventions (35 U.S.C. Sec. 207-209) Trademark royalties: No exception existed 22
LEGISLATIVE SOLUTION Proposed legislation took 2 years to get through OMB and Congress Creates trademark exception to Miscellaneous Receipts Act 23
NATIONAL DEFENSE AUTHORIZATION ACT FOR FISCAL YEAR 2005 10 U.S.C. 2260 Licensing of intellectual property: retention of fees (a) AUTHORITY- Under regulations prescribed by the Secretary of Defense, the Secretary concerned may license trademarks, service marks, certification marks, and collective marks owned or controlled by the Secretary concerned and may retain and expend fees received from such licensing in accordance with this section. (b) DESIGNATED MARKS- The Secretary concerned shall designate the trademarks, service marks, certification marks, and collective marks as to which the Secretary exercises the authority to retain licensing fees under this section. (c) USE OF FEES- The Secretary concerned shall use fees retained under this section for purposes as follows: (1) For payment of the following costs incurred by the Secretary: (A) Costs of securing trademark registrations. (B) Costs of operating the licensing program under this section. (2) For morale, welfare, and recreation activities under the jurisdiction of the Secretary, to the extent (if any) that the total amount of the licensing fees available under this section for a fiscal year exceed the total amount needed for such fiscal year under paragraph (1). 24
IMPORTANT ELEMENT OF STATUTE Congress endorses DOD Trademark Licensing Program Allows DOD to use money to pay Costs of trademark registration Costs of operating Trademark Licensing Program Excess revenue goes to MWR Secretary of Defense issues regulations and defines costs 25
TECHNOLOGY AND TRADEMARK LICENSING It s more than just games 26
TRADEMARKS OWNED BY MAJOR TECHNOLOGY COMPANIES Approximate number of U.S. registered trademarks owned by various technology companies Microsoft Corporation 1,075 Intel Corporation 131 Hewlett-Packard 334 IBM Corporation 223 Google, Inc. 75 Sprint Communications Co. 167 27
INTERNATIONAL CLASS 09- ELECTRONICS AND SCIENTIFIC APPARATUS Computer Software Advanced Warfare Environment (AWarE) is a fully integrated battle management software environment that provides real-time situational awareness to warfighting personnel engaged in the management of tactical operations 28
INTERNATIONAL CLASS A CERTIFICATION MARK - ELECTRONICS J : Electrical or electronic products acquired by, or manufactured for use by, or for, the United States government according to established U.S. government standards CDI Branded Diode Defense Standardization Program Office 29
POSSIBLE USES OF TRADEMARKS IN TECHNOLOGY LICENSES For licensing of copyrights or trade secrets where there is no other basis for retaining royalties Computer software Secret combinations of known elements Use in conjunction with CRADA, patent license or other type license. It increases value and identifies the government as the source of the technology Certification mark license. Example: 30
THINGS YOU CAN DO NOW Identify all marks, insignia and slogans that you think have commercial value Start active registration process With U.S. Patent and Trademark Office International filings under Madrid Protocol Consider certification mark program Start legislative exemption process to keep fees 31