tantalizing trademark to-do’s april 12, 2013 timothy m. donoughue intellectual property senior...

Tantalizing Trademark To-Do’sTantalizing Trademark To-Do’s

April 12, 2013April 12, 2013

Timothy M. DonoughueTimothy M. Donoughue

Intellectual Property Senior CounselIntellectual Property Senior Counsel

But first, a word from our sponsor:But first, a word from our sponsor:

All this is Tim’s opinion only, not the view All this is Tim’s opinion only, not the view of BHI, and not on the record.of BHI, and not on the record.

© 2013 Baker Hughes Incorporated.All Rights Reserved.

Licensed for educational use only.

TrademarksTrademarks

Definition of Trademark:Definition of Trademark: Any Any markmark which which Identifies and distinguishes goods Identifies and distinguishes goods

or servicesor services Indicates source of good or servicesIndicates source of good or services

TM

®



Trademark v. Service MarkTrademark v. Service Mark

A “Service Mark” is a mark that A “Service Mark” is a mark that designates services onlydesignates services only

A “Trademark” is a mark that A “Trademark” is a mark that designates goodsdesignates goods

However (just to be confusing), However (just to be confusing), “Trademark” can also be a mark that “Trademark” can also be a mark that designates services or both goods and designates services or both goods and servicesservices



1. 1. Don’tDon’t Miss a Mark! Miss a Mark!

Definition of mark is very broad.Definition of mark is very broad. Marks can now include sounds, colorsMarks can now include sounds, colors Marks can be foundMarks can be found

within other markswithin other marksLogos or slogansLogos or slogansStylizationsStylizations



2. 2. DoDo Know Your Country Know Your Country

In US, trademark rights are acquired by In US, trademark rights are acquired by use—no registration requireduse—no registration required

In RU, trademark rights are acquired by In RU, trademark rights are acquired by registration—use gives no rightsregistration—use gives no rights

In BR, the trademark office does not In BR, the trademark office does not send notices, they publish themsend notices, they publish them

In EP, the trademark office covers In EP, the trademark office covers several countriesseveral countries



3. 3. DoDo Understand the Goods/Services Understand the Goods/Services

Trademarks’ effects are limited to their Trademarks’ effects are limited to their particular goods and servicesparticular goods and servicesIn US, limited to actual useIn US, limited to actual useCan be multiple goods/servicesCan be multiple goods/servicesPart of a clearance searchPart of a clearance search

Example:Example:DELTA faucetsDELTA faucetsDELTA power toolsDELTA power toolsDELTA airlinesDELTA airlines



4. 4. DoDo Docket, Docket, Docket Docket, Docket, Docket

Accurate docketing is criticalAccurate docketing is criticalAvoids loss of rights in datesAvoids loss of rights in datesLowers costLowers cost

Critical to double check automatic Critical to double check automatic docketingdocketingEnsure that the country selection is Ensure that the country selection is

correctcorrectMake sure the dates look rightMake sure the dates look right



5. 5. Don’tDon’t Ever Abuse Marks Ever Abuse Marks

We must be models to our clients of We must be models to our clients of how to use trademarks correctlyhow to use trademarks correctlyBrochuresBrochuresEmailsEmailsMemosMemosLettersLetters

How the clients see the mark usedHow the clients see the mark usedinfluences how they in turn use itinfluences how they in turn use it



Grammar LessonGrammar Lesson

All trademarks are adjectivesAll trademarks are adjectives Use with generic name of Use with generic name of

product/serviceproduct/service““We ran the XMAC tool.”We ran the XMAC tool.”Not -- “We will ship ten XMACs.”Not -- “We will ship ten XMACs.”

Never use as a possessive, plural, verb Never use as a possessive, plural, verb or nounor nounDon’t “xerox it”; make a Don’t “xerox it”; make a

“photocopy”“photocopy”

Proper Use of MarksProper Use of Marks

Distinguish in printDistinguish in printCAPS or CAPS or italicsitalics

Include trademark noticeInclude trademark noticeTM, SM or TM, SM or ®® only for registered

marks Give notice of company Give notice of company

ownership if not obviousownership if not obviousFootnote with “TESTRAK is Footnote with “TESTRAK is

a service mark of Baker a service mark of Baker Hughes Incorporated”Hughes Incorporated”

®™

SM



6. 6. DoDo Know Trademark Infringement Know Trademark Infringement

Likelihood of confusionLikelihood of confusion Exact match not requiredExact match not required Must be within same marketMust be within same market

Similar to unfair competitionSimilar to unfair competition

If you suspect somethingIf you suspect somethingsee your attorney!see your attorney!



8. 8. DoDo Learn the USPTO Online Learn the USPTO Online

www.uspto.gov Under TrademarksUnder Trademarks

TESS – to searchTESS – to searchTEAS – to fileTEAS – to fileTSDR – to check the statusTSDR – to check the status

Then under Manuals, Guides…Then under Manuals, Guides…TMEPTMEPAcceptable ID of Goods/ServicesAcceptable ID of Goods/Services



7. 7. DoDo Keep Your Attorney Informed Keep Your Attorney Informed

Attorney-Client privilegeAttorney-Client privilegeExtends to “one employed by the lawyer Extends to “one employed by the lawyer

to assist” with legal services. TRE 503to assist” with legal services. TRE 503 Attorney work productAttorney work product

Extends to the work product of an Extends to the work product of an “attorney’s representative”. TRCP 192.5“attorney’s representative”. TRCP 192.5

For those to apply, you must be under the For those to apply, you must be under the supervision of the attorney!supervision of the attorney!



9. 9. DoDo Know a Proper Specimen Know a Proper Specimen

In US (Office is very particular on this)In US (Office is very particular on this) Specimen Specimen mustmust show the mark show the mark

Used on or in connection with the sale of Used on or in connection with the sale of goodsgoodsLabel, tag, stampLabel, tag, stampNot an ad, website except in limited Not an ad, website except in limited

cases!cases!In the sale or advertising of the servicesIn the sale or advertising of the servicesTMEP 904.07(a)TMEP 904.07(a)

10. 10. DoDo Ask for Help! Ask for Help!

Very complex areaVery complex areaParticularly in docketingParticularly in docketingEspecially with new jurisdictionsEspecially with new jurisdictionsA question now saves much grief later!A question now saves much grief later!

Questions?Questions?

Tantalizing Trademark TidbitsTantalizing Trademark Tidbits

April 12, 2013April 12, 2013

Timothy M. DonoughueTimothy M. Donoughue

Intellectual Property Senior CounselIntellectual Property Senior Counsel

tantalizing trademark to-do’s april 12, 2013 timothy m. donoughue intellectual property senior...

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