Trademark Basics
June 4, 2013
Christina Chamberlain, JD/MBA
University of Phoenix Instructor Assessment
Agenda
What is Intellectual Property?What are Trademarks?Obtaining a TrademarkWhether to register
Conclusions
What is Intellectual Property?
A property right is generally a right to exclude
“Intellectual Property” (IP) is generally a right to exclude others from making, using or selling intangible property created by the mind
What is Intellectual Property?
Public DomainMost IP rights have limited duration
Patents 20 years from date of filing
Copyrights life of author plus 70 years
Trademarks requires continued use in commerce
Obtaining a Trademark
In the U.S., formalities are unnecessary for trademark rights
Can go through formal registration process in order to enforce rights
Which is the better trademark?
“Sinublast”-for sinus medication
“Mr. Pibb”-for soft drinks
“Flash”-for photocopier
Choosing a good one!
Unique and strong marks are best Marks similar to ones used by several businesses
are weak (ex. Sinus medications with “sinu” as the prefix)
Suggestive marks are better, “Flash” to suggest speed (but avoid the GM mistake of Nova which literally means “no go” in Spanish!!)
Arbitrary or “fanciful” marks are the strongest--no connection with the related goods or services, ex. Mr. Pibb
Why is this not a good trademark?
“Nashville’s Best Two minute Dry Cleaners”
Avoiding a bad one!
Descriptive marks are weak Geographic names are weak Deceptively descriptive terms are bad Laudatory marks or personal names are not
good marks as you must prove secondary meaning
Generic Marks
Lite for Beer
Discount Mufflers for Mufflers
Super Glue for Glue
Do not distinguish one maker from another!!
Weak Marks
Champion for Sparkplugs, Laudatory
L.A. Gear for Shoes, Geographic
Steak and Brew for Restaurant, Descriptive
Tommy’s for anything, personal name
Must prove “secondary meaning” to be protectable
Strong Marks
Kodak for CopiersFanciful
Apple for ComputersArbitrary
Sure for DeodorantSuggestive
All are inherently distinct and protectable
Name some more…..
Trademark Searches
In order to avoid trademark infringement, you must do more than avoid known marksPerform a trademark search in the USPTOSearch state registrationsSearch common law uses of trademark Internet uses of trademark
Trademark Registration Process
Scope State registration only cover within state borders Federal registration, entire U.S. and territories
Requirements Use of Mark In commerce
Whether to Register
Federal registration can cost $1000.00 or more, but it is the only way to ensure U.S. protection
Attorney admitted to practice anywhere in the U.S. can register with PTO, but many lawyers are not exposed to trademark law or registration procedures, always best to seek out a specialist
Conclusions
TrademarksMake sure your mark is protectableMake sure you mark is not owned by
anyone elseProtect valuable marks with trademark
registration