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