TRADEMARKS 101:Protecting Your Brand

Co-Sponsored by SmartUp® & General Assembly®

Presented By Andrei D. Tsygankov, Esq.Entrepreneur & Attorney-At-Law

About Me• B.S. in Management from Georgia Tech• J.D. from Georgia State University College of Law• Current:

• Co-Founder and COO of SmartUp®

• Partner at Founders Legal™ (Bekiares Eliezer LLP)

• Former:• Managing Director & In-House Counsel for a group of companies that

focused on Export Management & Distribution of goods internationally

How This Presentation May Help You

• We will explain:

• What Trademarks (and Servicemarks) are and how to use them

• How a Federal Registration [ ® ] help your brand and your company

• Registration process and common problems• What to do if someone infringes on your Trademark?

What is a Trademark?

Identifier of Source

What is a Trademark?• For Consumers:• Creates an association between a Product or Service and its provider • Assurance of Quality

• For Sellers/Providers of Products or Services:• Identifies that a Product or Service is provided by YOU, and ONLY

YOU• Creator of Goodwill for your company

2 Important Functions of a Trademark

1.Protect Consumers

2.Protect Sellers of Goods and Services

Common Law Trademark Rights

• Using a Name, Logo, Slogan, etc. in your line of business• Adding “TM” (for Goods) to your mark to claim your

Trademark• Adding an “SM” (for Services) to your mark to claim your

Servicemark• For Example• MYBRAND™ or MYBRANDSM

What Is Federal Trademark Registration?

• Protects a Mark (a “Brand”) under Federal Law (Lanham Act)• Gives rights and protections for your Mark

nationwide• Administered by the United States Patent and

Trademark Office (USPTO)

What Is The Benefit Of Federal Registration?

• Registering your mark gives you the EXCLUSIVE right to use that Mark in your field

• A Federal registration gives you great tools to ENFORCE your exclusive rights to the Mark throughout the United States

What Is The Benefit Of Federal Registration?

If you obtain a Federal Trademark Registration on your Mark(s):

Everyone else using that Mark after your registration, does so

AT THEIR OWN RISK

2 Main Categories of Trademarks

Trademark (for Goods)

Servicemark (for Services)

What Can Be Trademarked?

Unique Things Associated With Your Brand

What can be Trademarked?

WordmarkSloganName

What can be Trademarked?

Logomark Combined

Word/Logomark

What can be Trademarked?

Packaging

Design

What can be Trademarked?

Colors

What can be Trademarked?

Trade DressColors + Design + Layout

What can be Trademarked?

Sounds Scents

What can be Trademarked?

• Name • Logo• Slogan• Packaging• Design

• Colors• Trade Dress• Sound• Scent

The Trademark Process

• Selecting your Mark(s)• Clearance & Conflict Search• Researching Appropriate Classes and Sub-Classes• Filing Application and Obtaining Registration• Using your Mark Correctly After Registration• Enforcing Your Mark

Selecting Your Mark

Generic Descriptive Suggestive Arbitrary Fanciful

Spectrum of Distinctiveness

STRONGWEAK

Selecting Your Mark

• Can the Mark be Registered?• GENERIC?

• SIMILAR MARK ALREADY REGISTERED?

Selecting Your Mark

• Can the Mark be Registered?• MERELY DESCRIPTIVE? • By Product, Service, or Geography?

• DECEPTIVELY GEOGRAPHICALLY MIS-DESCRIPTIVE?

Selecting Your Mark

• Risk of 3rd Party Action?

• Risk of Protest, Opposition or Cease & Desist • Infringement Lawsuit

Selecting Your Mark

• Strength of Mark?• Will I be able to use my Mark Exclusively?• To what extent will I be able to prevent others

from using it?• Will the Mark help to increase the value of my

brand and my company?

Searching For Conflicts

• USPTO• Trademark Electronic Search System (TESS)

• Search Engines• Google, Bing, Yahoo, etc.

• Search for names that are SIMILAR to yours!

Searching For Conflicts

• State Trademarks Database• In GA: Georgia Secretary of State

• State Business Entity Names• In GA: Georgia Secretary of State

Searching For Conflicts

• If Conflicts Exist:• Find a different Mark to use• Modify your Mark substantially• Propose a Co-existence Agreement to the

registrant• Purchase the conflicting Mark

Researching Classes & Sub-Classes

• Nice Classification of Goods & Services• 45 International Classes• Each Class has many Sub-Classes

• USPTO• Trademark ID Manual (TMIDM)

Researching Classes & Sub-Classes

• Select the International Class closest to your Mark

• Select the appropriate Sub-Classes for each Class• ONLY select the ones you are actually USING• Do NOT invent your own – use the ones listed

Registration Process: Filing Application

• USPTO• Trademark Electronic Application System (TEAS)

• Filing Fees:• $225 per International Class (TEAS Plus

Application)

Registration Process: Filing Application

• 2 Main Application Types• ‘In Use’ – Mark is used in ‘Interstate Commerce’

• ‘Intent to Use’ – Mark not used yet, but bona fide intent to use it exists• Once allowed, must show use within 6 months• Up to 5 extensions allowed, for a total of 3 years

Registration Process: Timeline

• Assigned to Examiner: 3-4 Months from Filing• If no issues found, Notice of Publication 3-4

Months From Examiner Review• Registration 1-2 Months after Publication• Minimum Time to Registration: 7 Months

Examiner Review

Compliance With RequirementsNo Conflicts

Approval of Application

Publication for Opposition

No Oppositions Filed

REGISTRATION

Application Filed

Office Action (Refusal) Non-Compliance

Application Abandoned

TTAB

Response Final Refusal

3rd Party Opposition Filed

Appeal

Applicant Wins Applicant Loses

Post Registration Maintenance

• To keep Registered Mark AFTER Registration:

• Must file Affidavit of Use between year 5 and 6 (following registration)

• Must file Renewal every 10 years (between years 9 and 10 following registration)

Post Registration Use

• Make sure to use the ® symbol with your Mark• Once registered, and the ‘TM’ symbol before

• Use your Mark consistently – NO changes at all to the wordmark, logo, or slogan

Post Registration Use

• Distinguish your Mark when using with other terms:• Write the Mark using CAPITAL LETTERS, in Italics, or using a

stylized font unique to the Mark• Example• TIDE laundry detergent• Nordstrom department stores• Nike® running shoes

Post Registration Use

• Use your Mark completely and properly• LEGO bricks, not ‘LEGO’s’

• Never use your Mark in a ‘possessive’ form• Television show on AMC, NOT ‘AMC’s Show’

• Never use your Mark as a Noun, only as an adjective that modifies it • McDonald’s hamburgers

Post Registration Use

• Never use your Mark as an action• Searching online via GOOGLE search engine, NOT

‘Googling’

• Never use your Mark in plural form• BMW automobiles, NOT ‘BMWs’

Why Is Proper Use Important?

Protects the strength and value of your Brand

What Do These Have In Common?

• Aspirin• Zipper• Escalator• Heroin• Trampoline• Videotape

Genericide

What Do These Have In Common?

• Xerox• LEGO• Band-Aid• Google

Actively FightingGenericide

Enforcing Your Rights

• Monitor the Competition

• Monitor Federal Trademark Applications

• If someone is using your Mark or something similar to it, notify them immediately to stop (and take legal action if necessary)

Someone Claims That I Am Infringing…

• See a professional about evaluating your case

• Review of opposing application and registration

• Negotiation with opposing party

Things You Can Do

• Select your Mark• Do your own Conflict Search• Look into the appropriate Trademark International

Classes and Sub-Classes• Establish your ‘Date of Use’ (save the evidence)• Prepare ‘specimens’ showing your Mark in use

Get Professional Assistance With…

• Reviewing your conflict search results• Evaluating registerability and risk of conflict with 3rd

Parties• Confirming your selection of International Classes and

Sub-Classes• Confirming appropriateness of ‘Use Date’ and specimens • Filing Application

Get Professional Assistance With…

• Monitoring your Mark• Enforcing your rights:• Protests & Oppositions• Cease & Desist Letters• Infringement Claim Evaluations

Common Pitfalls

• Not doing a Conflict Search• Searching for only exact matches and not considering

similar names or very big players• Claiming an incorrect date of use • Selecting the wrong International Class• Claiming too many sub-classes

My Contact InfoAndrei Tsygankov, Esq. Andrei@smartuplegal.com800-530-4983@Smartup_

ATLANTA TECH VILLAGE Suite 5553423 Piedmont Road, NEAtlanta, GA 30305

To schedule a consultation with me please visit www.smartuplegal.com and click consult!