Brand Creation: From Conception to Protection

Part II:

Presented by: Daliah Saper

What is a Trademark? A Trademark is a distinctive sign, symbol, or indicator which is

used to identify the particular source of products or services. Trademarks may also be used to distinguish a particular product from other similar or competing products.

Trademarks will typically take the form of a: name, word, phrase, logo, symbol, design, image, even smell! ……..or a combination of these elements.

Common Law v. Registered Trademarks

Common Law Trademarks – The Symbols ™ represents an unregistered trademark and serves as a recognition that the particular trademark has not been registered with the United States Patent Office (“USPTO”). It is a notification that there exists a public claim to the use of a particular trademark.

Use - Common Law Trademarks are generally valid solely within the state in which they are actively being used in commerce with proof of first usage of the particular mark.

Protection – Common Law Trademarks are generally protectable to the same extent of Federally Registered Trademarks under the Lanham Act—but you have to jump through more hoops to enforce your mark.

Common Law v. Registered Trademarks Cont.

Federally Registered Trademarks – The symbol ® is a notice to

the public that a particular trademark is federally registered. A Federally Registered Trademark is seen as much more valuable

than a Common Law Trademark. Registering – A Federally Registered Trademark usually takes

about 1 and ½ years to register. Here, the Common Law Trademark will provide protection during this interim period.

Protection – Federally Registered Trademarks are also protected under the Lanham Act. Unlike Common Law Trademarks, however, a Federally Registered Trademark is much easier and cheaper to protect.

Incontestability – Another advantage of having a Federally Registered Trademark is that after your mark has been registered for 5 years you may file for incontestability. A very valuable asset when selling a business.

Other Types of Intellectual Property

Intellectual Property – As a general matter, Intellectual Property refers to the legal field that involves protection of creations of the mind and may take many different forms.

Trademarks, Copyrights, Patents, and Trade Secrets Copyrights – Copyright protection grants exclusive rights of use to the

authorship of an original work, however, this protection only lasts for a limited period of time.

Patents – Patent protection grants exclusive rights of use to the invention of or discovery of any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. “Anything under the sun made by man.”

Trade Secrets –Trade Secret protection grants exclusive rights of use for any formula, practice, process, design, instrument, pattern, or compilation of information which is not generally known or reasonably ascertainable, by which a business can obtain an economic advantage over competitors or customers.

Trademark Distinctiveness The strength of any particular trademark will depend on the

marks capability to distinguish itself from that of other goods or services. Generally, the strength of a mark is categorized along a spectrum of distinctiveness along five terms (from most to least distinctive). Fanciful – Marks that have been invented for the sole purpose of

acting as a trademark.(Kleenex, Xerox). Arbitrary – Utilizes a device that has a common meaning but no

relation to the mark itself (Apple). Suggestive – Marks that suggest a particular quality or characteristic

of the goods and services (Microsoft, Netscape). Descriptive – Devices that merely describe the services or goods on

which the mark is used (Container Store). Generic – Devices that actually name a product and are incapable of

trademark (Modem, E-mail).

What are the steps to getting a trademark registration?

Conduct a trademark searchPrepare the ApplicationSubmit the ApplicationWait for an Examiner to review your fileCorrespond with the ExaminerIf all goes well, you’re on to publication, and

then hopefully registration.

Search Process The first step in the registration process is to search the USPTO to

see if anyone is claiming trademark rights in a particular mark.

A simple knock out search can be done through the USPTO website (www.uspto.gov). Through this website you can search for any and all registered and to be registered trademarks.

Due to the immense number of Federally Registered Trademarks you can also hire a search company that will search all possible trademark databases and can also be hired to monitor your particular trademark for any future infringement.

ITS VERY IMPORTANT TO CONDUCT A TRADEMARK SEARCH

Filing Process Work with your attorney to prepare the application:.

Describe your Trademark Figure out your “First Use In Commerce” Describe products or services on which mark will be used Suggest the Classification under which the mark will be used

Delineating classification type is the basis for determining which fees will be assessed to your particular trademark application. Goods and services are separated out into about forty different classifications and many applicants for trademark will register across classes.

Intent to Use v. Use Based Trademarks

Federal trademark rights and protections are ultimately based on actual use in commerce.

Intent to use – Filing an intent to use trademark application allows the applicant to file for trademark protection before committing all of the costs of marketing and promoting the mark. An applicant who files an intent to use application must make actual use of the mark before it can be registered.

Use Based – According to the USPTO an applicant filing a use based application must actually already be using the mark in commerce in connection with the goods and/or services identified in the application.

Trademark ExaminersA trademark examiner is an attorney who is

employed by a government agency. Typically, trademark examiners will be employed by the USPTO. Their primary occupation is to determine whether or not the trademark of a particular applicant will receive registration.

Trademark examiners receive extensive training from the USPTO before they are assigned to the registration of any mark.

Office Actions An office action is an informative letter from the USPTO issued

by the trademark examining attorney who assigned to a specific trademark application. The letter informs the applicant of the legal status of a trademark application.

The four types of office actions are Examiners Amendments, (easy things taken care of with a phone

call) Priority Actions, (procedural things that need to be taken care of ) Final Office Actions (substantive legal arguments that your

attorney needs to respond to) Non Final Office Action Final Office Actions, and

Suspension Letters.

Trademark Publication After an applicant has gone through the required examination

period they may now begin the publication for opposition stage of the application process. If the Trademark Examiner has found no reason why a trademark

should be denied registration then the examiner will send notice to the applicant that their mark will proceed to publication in the Official Gazette. The Official Gazette is a weekly publication put out by the USPTO and includes record of all of the trademarks that have been approved for publication.

After the mark has been placed in the Official Gazette anybody who believes that the rights of their mark are being infringed will have 30 days from that point to raise a rebuttal (this is a rare event and only happens in about 3% of all trademark publications).

If there are no rebuttals to your mark then Congratulations your mark is now officially registered!!!

Post Registration A registered trademark has the potential to exist forever assuming

that the trademark registration is kept in proper order. It is possible, however, that an owner who does not keep their mark in order will be subject to trademark abandonment. In particular, there are two ways in which a trademark may be abandoned. Non-Use – After a particular period of time, if the mark is not

used in commerce it may be deemed abandoned. Generic – A mark may become generic if it becomes so

associated with the underlying good that it is used interchangeably with your mark.

Trademark Protection After your trademark has been registered there are several means by

which a mark owner will wish to protect their mark. Registration – As mentioned earlier, after use, trademark

registration is the first step in protecting your mark and provides the most thorough protection for trademarks.

Maintenance – Trademarks must be maintained through proper use and due diligence. This involves keeping your mark active in the stream of commerce and ensuring that your mark does not become generic.

Watching – Many trademark owners list their marks with various trademark watching services. These services are particularly helpful when a company seeks to expand their enterprise in the USA and abroad.

Enforcement – Enforcement consists of pursuing adverse users. A particularly cheap and effective method of enforcing against an adverse user is by having an attorney file a “cease and desist” letter. While litigation may prove necessary it should be avoided whenever possible.

Trademark Case LawOpus DecorShe Beads

Neverly Brothers BandXpedia v. Expedia

Mastercard v. Checkmaster