Yesterday, in the precedential opinion, Aylus Networks, Inc. v. Apple Inc., No. 16-1599 (May 11, 2017 Fed. Cir.), a panel of the Federal Circuit upheld the lower court’s summary judgment of non-infringement based on a claim construction that included a prosecution disclaimer. In an issue of first impression for the Court, the panel held that a patent owner’s statements made during an inter partes review proceeding (IPR) can be relied on to support a finding of prosecution disclaimer. See Opinion at 8.
The Aylus decision adds to the strategic justifications for using an IPR in defending a claim of patent infringement. Not only may a defending party hope to invalidate the asserted claims using an IPR proceeding, but may now also (or in the alternative) hope to obtain favorable prosecution history that narrows the scope of the asserted claims.
A lot of confusion exists concerning the terms “brand” and “trademark” among the three groups of people who deal with them--namely marketing people, lawyers and consumers (lay people). Lawyers and marketing people often talk past each other when discussing brands and trademarks. The marketing people understand the brand concept, but often don’t understand the legal intricacies of trademarks. Lawyers understand the legal aspects of trademarks, but often don’t understand the nuances of brands. Consumers don’t need to know the particularities of either trademarks or brands, and they don’t need to, but they do react to both, and marketing people and lawyers need to understand how and why.
The confusion between brands and trademarks can be illustrated by some commonly held beliefs. Many believe that a brand and a trademark are synonymous. Others believe that all trademarks are brands, but not all brands are trademarks. Still others believe that brands are the names of products or companies. Since some of these beliefs are inconsistent with each other, they cannot all be correct. So, let’s see if we can straighten this out by looking at some definitions, beginning with some legal definitions.
There is no dispute over the definition of “trademark”. The federal statute governing trademarks (15 U.S. Code Chapter 22) defines the term “trademark” as including “any word, name, symbol, or device, or any combination thereof …. used by a person ….. to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” (15 U.S. Code § 1127). The issue then is what is a “brand” and what is its relationship to a trademark?
The federal trademark statute does not define or refer to a “brand”. Turning to Black’s Law Dictionary (9th Edition), a “brand” is defined as “A name or symbol used by a seller or manufacturer to identify goods or services and to distinguish them from competitors’ goods or services.” This definition is similar to the definition of “trademark” in the federal trademark statute, thereby providing support for the belief that the terms “trademark” and “brand” are synonymous. But wait. Black’s Law Dictionary further states that “the term [brand] used colloquially in business and industry to refer to a corporate or product name, a business image, or a mark, regardless of whether it may legally qualify as a trademark”. This additional, colloquial definition provides support for the belief that all trademarks are brands, but not all brands are trademarks.
Now, let’s look at the definition of “brand” from a marketing perspective. According to the American Marketing Association (AMA), a “brand” is defined as a "Name, term, design, symbol, or any other feature that identifies one seller's good or service as distinct from those of other sellers.” This definition looks similar to the legal definitions for “brand” and “trademark” set forth above. Going further, the AMA defines a trademark as “[a] legal term meaning the same as brand. A trademark identifies one seller's product and thus differentiates it from products of other sellers.” We are now back to “brand” and “trademark” as being synonymous.
So far, we have not shed much light on the distinction between “brand” and “trademark”. Let’s see if we can muddy the waters even further, using McDonald’s as an anecdotal example. The McDonald’s Corporation owns hundreds of trademarks. Most of them are registered. One of these trademarks is I’M LOVIN IT® for hamburgers and other food. Unquestionably, this is a trademark. It is registered in the U.S. Patent and Trademark Office (USPTO). In addition, most consumers when seeing or hearing I’M LOVIN IT® in connection with food, would think of McDonald’s (Corporation). However, if you asked a consumer at a McDonald’s restaurant (like my son) what brand of hamburger they were eating, they wouldn’t say, “I’m eating an I’M LOVIN IT® hamburger”. They would most likely say (like my son), “I’m eating a MCDONALD’S® hamburger”. Thus, I’M LOVIN IT® is a trademark, but it is not viewed by consumers as a brand. From a consumer point of view, that dispels the belief that trademarks and brands are synonymous and the belief that all trademarks are brands.
How do we resolve this confusion? Go with what you know, or more accurately, who you know. Most of us know marketing people and all of us know consumers, such as my son, who consumes a lot (especially food). Indeed, we are all consumers. Neither group views the AMA definition of “brand” given above as accurately capturing their understanding of the term. Consumers typically view a brand as identifying the source of a product or service. Of course, they have particular feelings and opinions about this source and its goods and/or services. The marketing people understand that these feelings are part of what defines a brand. Armed with these foundational elements, lets take a look at what two of the leading marketing experts have to say.
Looking initially at Jean-Noel Kapferer’s book, The New Strategic Brand Management (4th Edition)(Kogan Page Limited, 2011), we know we are on the right track when he states on page 9 that: “Curiously, one of the hottest points of disagreement between experts is the definition of a brand. Each expert comes up with his or her own definition, or nuance to the definition.” With regard to his own definition(s) of “brand”, Mr. Kapferer initially states on page 11 that: “in essence, a brand is a name that influences buyers, becoming a purchase criterion”. Later, on page 13, he more comprehensively states that: “a brand is a shared desirable and exclusive idea embodied in products, services, places and/or experiences”. With regard to the difference between a trademark and a brand, Mr. Kapferer provides a useful distinction. He notes that a trademark has a birthday, which is its registration date (or in the U.S, the day it is first used in commerce), whereas, a brand is not born, but is instead made, recognizing that it takes time to create a brand.
Kevin Lane Keller, in his textbook, Strategic Brand Management (3rd Edition)(Prentice-Hall, Inc., 2008), acknowledges the deficiency of the AMA definition of “brand” vis-a-vis the understanding of brand managers, noting on page 2 that “many practicing managers refer to a brand as more than that—as something that has actually created a certain amount of awareness, reputation, prominence, and so on in the marketplace.” In an earlier (2nd) edition of his textbook, Mr. Keller defined a brand as a “set of mental associations held by the consumer, which add to the perceived value of a product or service.”
From our definitional journey described above, we know that there is no universally accepted definition of brand. We also know that a lot of definitions out there don’t accurately capture the understanding of consumers and marketing people of what a brand is. So, even though we are not experts, let’s take the cue from Mr. Kapferer and create our own definition of “brand”. Borrowing from Mr. Kapferer, Mr. Lane and our own experiences, let’s go with: “A brand is a collection of intangible elements that identifies a source of goods and/or services and creates a shared set of mental associations that influences buyers to purchase the goods and/or services of the source.” (Of course, as with trademarks, the actual source of the goods/services need not be known). A further definitional feature would be that a brand is not synonymous with a trademark, but (in the U.S.) includes at least one trademark (the name of the brand). The brand could include additional trademarks, such as symbols, slogans, jingles, etc. In addition, a brand includes factors that affect perceptions of attributes such as quality, innovation, safety, etc. While not perfect and somewhat wordy, we believe our definition more accurately captures the understanding of marketing people, lawyers and consumers of what a brand is. Let us know what you think.