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Trademarks & branding

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Connie J. Mableson, Esq. www.mablesonlaw.com 602-277-8100
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Connie J. Mableson, Esq.www.mablesonlaw.com602-277-8100

The materials in this presentation and information provided by Connie J. Mableson are for informational purposes only and not for the purpose of providing legal advice and no legal advice may be presumed. Use of and access to these materials and any other information provided by Connie J. Mableson does not create an attorney-client relationship between you and Connie J. Mableson. You should contact your attorney to obtain advice with respect to any particular issue or problem.

1. Why is a Trademark important to your business?

2. Considerations and Criteria for selecting your Trademark.

3. How to Protect your Trademark.

1. Patent2. Copyright3. Trademark

A copyright protects original works of authorship, such as writings, music, and works of art that have been tangibly expressed.

A patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention.

A trademark is a brand name.

A trademark or service mark includes any word, name, symbol, design, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.

Word, slogan, symbol, design, or combination that –

1- Identifies the source of your goods or services (source identifier) AND

2- Distinguishes them from the goods and services of another party.

Customer loyalty = repeat business.

Consistent level of quality that customers come to expect that generates repeat business.

Does not need to be of high quality, but consistently the same quality.

Repeat customers = Goodwill (an asset).

Soundhttp://www.uspto.gov/trademarks/soundmarks/

Color

Smell – fragrances

Domain Name = URL or web address.

Business Name = Name under which you are doing business in your State. May or may not be used as a trademark. Merely registering your LLC or INC with the State does not grant trademark rights.

Can be used as a trademark if it is used as a source identifier.

Sell GOODS = Trademark or Trade name (TM)

Provide SERVICES = Servicemark (SM)

Can be used interchangeably

- Choose a strong trademark- Choose a trademark that will scale with your business- Chose a trademark that can be registered with the USPTO- Avoid choosing a trademark that is the same or similar to another trademark

- Generic – common words with common meaning (weakest & not protectable)(Bicycle for bicycle retailer)

- Descriptive (weak and not immediately protectable on use)

- Suggestive (strong)

- Arbitrary (stronger)

- Fanciful (strongest)

- Descriptive (ingredient, quality, function, feature, characteristic) and is not immediately protectable upon use. - Must obtain secondary meaning by continued advertising with a big budget so that the consuming public associates the Trademark with you (the source).- After 5 years secondary meaning is presumed.

- Suggests attributes or advantages- Immediately protectable upon first use

ROACH MOTEL – for insect trapsFLORIDA TAN – for suntan lotionGLANCE -A- DAY - for calendars

- Common words used in meaningless context- Immediately protectable upon first use- Inherently distinctive

CAMEL for cigarettesAPPLE computer

- Made up words with no dictionary meaning- Coined terms- Inherently distinctive and have protection immediately upon use

KODAKVERIZONCLOROX

- Merely descriptive - Surnames (Jackson’s Drycleaners)- Laudatory (Best Beer in Arizona)- Misspellings (Kleaners)- Geographic (Centerville Car Parts)- Acronymns (ACCD) – most are meaningless- Deceptive, disparaging, offensive- “confusingly similar” with another Mark

1) Marks are the same or similar. Look alike, sound alike or have same meanings. CREATE SAME COMMERCIAL IMPRESSION.

2) Goods and Services are Related. Consumers mistakenly believe the goods and services come from the same source.

3) X-seed for a seed company vs Exceed for a company selling live plants

Selecting the right brand name will allow you to differentiate your product/services of your competitors, and will also allow you to focus your time and efforts growing the brand itself rather than trying to enforce a weak/descriptive mark.

- Word(s)- Slogan- Images- Combination

Remember- Trademarks are source identifiers and distinguish your goods/services from those of your competitor.

Check for confusingly similar marks.Why?

- Someone may be already using the Mark. - There may be a Mark similar to yours that will create customer confusion.- Differentiation is the key.

- Google (name)- Google images- USPTO.gov TESS search- State Search -http://www.azsos.gov- Purchase a full search (federal, state and many other databases) especially if an image is involved.- WHOIS searches for domain names (whois.net, Godaddy, many others).

- Common Law based on USE of the Mark

- State by State registration (in each State where you are using the Mark)

- Federal Registration (www.uspto.gov)

Common Law

First party to use the Trademark in a particular geographic area is the “superior” user and has the right to exclude others from using the same or similar Trademark on similar goods/services in that area.

First in time = first in right as to each geographic area in which the trademark is used

By USING/USE the Trademark -

GOODS: ON the goods or on the packaging or tags affixed to the goods.

SERVICES: IN CONNECTION WITH the services by advertising, brochures, etc.

State by State

- Arizona Secretary of State register Trademark/Trade Name.http://www.azsos.gov/business_services/tnt/- $10 Trade Name -$15 Trademark- Online Forms- Trade Name registrations last 5 years; Trademarks last 10 years.

Federal (USA) Filing -Advantages include-

- Legal presumption you own the Mark.- Legal presumption of exclusive right to use the Mark -throughout the entire US and territories.- Puts public on notice of the ownership of the Mark.- In the USPTO database so helps others avoid selecting your Mark or a confusingly similar mark.- Registration with US Customs & Border protection.- Right to bring action in federal court.- Use federal registration as a basis to file in other countries.- After 5 years of continued use, the Mark becomes incontestable.

- Use the ®.

- If you are actually USING the Trademark, then file a USE Application.

- If you are currently not using the Trademark but plan to use it in the next 3 years, then file an INTENT TO USE Application.

- Interstate commerce requirement – you can file a federal application only if you are selling goods or offering services in 2 or more states.

1) Description of Goods or Services. USPTO classifies goods and services into numerical “classes”. You must write a description of your goods and services by using the USPTO predetermined descriptions or by using your own “freestyle” description.

2) Specimens. Specimens must show use of the Mark on goods or in connection with the services.

- File with USPTO electronically- Examiner appointed to examine the application- The examination is a “prosecution”- Examiner may issue an “office action” that rejects the application for several reasons or asks that it be changed. The examiner may disagree with your description of goods and services, may not like the specimens you submitted to prove you are using the mark on the goods or in connection with the services. Six months to respond.

- Once Examination is complete, application is published in the Official Gazette of the U.S.-If no one objects in 30 days, application goes to registration.- If a Notice of Protect is filed within the 30 days, the matter goes to TTAB.- Receive Registration in the mail- Use the ®

- USE the Mark on your goods or in connection with the services.-Tickle your calendar for: Between 5th and 6th year, filed Affidavit of Continued Use Between 9th and 10th years, file renewal- Actively “police” or monitor your Mark to make sure no one is using it or there is not another confusingly similar Mark being used.

- At any stage- Can help with determination of generic or descriptive marks- Can assist with a search/name availability- Can write your description of goods/services- Can assist with a description of a logo mark- Can prepare responses to Office Actions- Offer alternatives- Help to avoid scams

No legal advice is being given but general information only

My contact information:Connie J. Mableson602-277-8100www.mablesonlaw.com


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