trademark basics

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Trademark basicsCoyote BranchFebruary 13, 2017Peter Grant, State Library of ArizonaA division of the Secretary of State

Can You Name That Trademark?


KFCSerial # 72209176



NBCSerial #74576101



AllstateSerial # 78308365

Trademark BasicsWhat is a Patent and Trademark Resource Center?Types of Intellectual PropertyWhat is a Trademark?Choosing a TrademarkState TrademarksFederal TrademarksUSPTO ToolsSources for AssistanceTips for Working with an Attorney

What is a Patent and Trademark Resource Center (PTRC)?A library selected by the US Patent and Trademark Office (USPTO) to provide patent and trademark materials to the publicPTRC librarians are trained by the USPTO to help patrons with intellectual property questionsPTRCs have core collections of related resources and are part of a network of 85 libraries

85 nationwide; 1871; 22 libraries9

Types of Intellectual PropertyPatentsCopyrightsTrade SecretsTrademarks

patents

PatentsThe grant of a property right to the inventor, issued by the United States Patent and Trademark Office.A patent obtained in the U.S. gives the patent holder the right, for a limited time, to exclude others from making, using, offering to sell, selling, or importing into the U.S. the subject matter that is within the scope of protection granted by the patent.U.S. Constitution: Article 1, Section 8, Clause 8To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

PatentsWhat can be patented?any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof

PatentsUtilityDesignPlant

Term: 20 yearsTerm: 15 yearsTerm 20 years

Copyrights

CopyrightsCopyright is a form of protection provided to the authors of "original works of authorship" including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished.The copyright protects the form of expression rather than the subject matter of the writing.U.S. Constitution: Article 1, Section 8, Clause 8To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

CopyrightsWhat can be copyrighted?"original works of authorship" including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished.

CopyrightsIndividual or Known AuthorAuthors Life +70 years

Work for Hire or Pseudonymous95 years from first publication or 120 years from creation, whichever is shorter

For works created pre 1978, see Copyright Office publication: http://www.copyright.gov/circs/circ15a.pdf

Do have automatically; benefits to register {trade secrets}18

Trade Secrets

Trade Secretsall forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing if(A) the owner thereof has taken reasonable measures to keep such information secret; and (B) the information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, the another person who can obtain economic value from the disclosure or use of the information.

Defend Trade Secrets Act of 2016

Trade Secrets

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Trademarks

What is a Trademark?A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others.Lanham Act (Trademark Act of 1946). Passed by Congress on July 5, 1946. Took effect July 5, 1947

What is a Trademark?Trademark/name

Servicemark/name

What is a Trademark?The color(s) green and yellow is/are claimed as a feature of the mark. The mark consists of the color combination green and yellow in which green is applied to an exterior surface of the machine and a yellow stripe is applied to a portion of the exterior surface. When viewed from a distance, the stripe appears solid yellow. The broken-line outlining is to show the position or placement of the mark on the goods. The outlining and the shape of the machine are not claimed as part of the mark.Reg # 4277914

Reg # 3854018

What is a Trademark?

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What is NOT a Trademark?Domain NameHuman friendly form of internet addressUsed to locate websitesCan infringe on anothers trademarkRegulated by ICANN (Internet Corporation for Assigned Names and Numbers)

www.hollister.com

www.hollisterco.com

What is NOT a Trademark?Geographical Indicationis a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin.World Intellectual Property Office (WIPO)

Champagne

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Choosing a trademarkSome are stronger than others

Strengths of TrademarksDescriptiveSuggestiveArbitraryFanciful

Descriptive MarksDescribes some characteristic of the product marks deemed merely descriptive may not be registerable unless they acquire distinctiveness

Skinner Mfg. Co. v. Kellog Mfg. Sales Co. et al., 62 USPQ 234 (8th Cir. 1944)Disclaimer: NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "RAISIN BRAN" APART FROM THE MARK AS SHOWNLoctite Corp. v. Natl Starch and Chem. Corp., 516 F. Supp. 190 (S.D.N.Y. 1981)

Suggestive MarksImply a characteristic of the product

Arbitrary MarksActual words whose meaning has no relation to the goods protected

Googol, 10 to 100th power33

Fanciful MarksInvented words with no dictionary definition

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Trademark BasicsWhat is a Patent and Trademark Resource Center?Types of Intellectual PropertyWhat is a Trademark?Choosing a TrademarkState TrademarksFederal TrademarksUSPTO ToolsSources for AssistanceTips for Working with an Attorney

Trademark registrationState or Federal?

State Trademark RegistrationNot legally required, but is an accepted practiceFiled in the Office of the Secretary of State

State Trademark RegistrationSecretary of States Office will register a trade name and/or trademark/servicemark with the state.Exclusive right to use the mark in the State of ArizonaTradename registrations are good for 5 years, trademark registrations are good for 10 years (both can be renewed indefinitely)May collect damages up to MSRP or $500 for each item, whichever is greaterLearn more about the requirements for registering a mark at www.azsos.gov under Business.

State Trademark Search

Search for the root of a wordTake off all plural references"Made-up" names should be used in connection with the nature of business

State Trademark FeesTradename: $10Trademark: $15

RenewalsTradename $10 every 5 yearsTrademark $15 every 10 yearsFile renewal 6 months before expiration date

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Federal Trademark Registration

Federal Trademark RegistrationLegal presumption that the person owns the markExclusive right to use the mark nationwide (with specific types of goods/services that you registered)The right to use the for federal marksThe ability to sue for infringement in federal courtthree times such profits or damages, whichever amount is greater, together with a reasonable attorney's fee (15 U.S.C. 1117 (SECTION 35 OF THE LANHAM ACT))Must file declaration of use between 5th & 6th and 9th & 10th years, every ten years thereafter ($300/class)

Federal RegistrationTEASTEAS RFTEAS+PaperRenewal$400$275$225$600$300/$500*File electronicallyAgree to e-mail communication, electronic submission of additional documentsTEAS RF requirements, plus use description of goods and services from ID manual; Pay upfront; provide certain statements*Paper renewal

All prices per class of goods/servicesPrices in RED effective January 14, 2017https://www.uspto.gov/trademarks-application-process/filing-online

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Federal RegistrationIs it Registerable?Merely a surnameMerely descriptivePrimarily geographically (mis)descriptiveVulgar or disparagingConfusingly similar to an existing registrationIs it Enforceable?DescriptiveSuggestiveArbitraryFanciful

Federal RegistrationMerely a SurnameSection 2(e)(4)Mark is primarily a last nameConsider the primary significance to the purchasing publicWhat is the dominant commercial impression of the mark as a whole?

Merely DescriptiveSection 2(e)(1)Issued when the trademark immediately describes a significant aspect of the goodsPurpose, function, useCharacteristic, ingredientQuality or feature

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Federal RegistrationGeographically DescriptiveSection 2(e)(2) and 2(e)(3)Issued if primary significance of the mark is geographic and the public would likely believe the goods or services originate in the place identified in the mark

Vulgar or Disparaging15 U.S. Code 1052Immoral, deceptive or scandalous matterFalsely suggest a connection with person living or dead, institutions, beliefs or national symbols or brings them into contempt or disrepute

Federal RegistrationSupplemental Registration Does Allows for the registration of marks which are CAPABLE of indicating sourceProtects mark under section 2(d)Grants use of the registration symbolPermits registrant to file suit in federal courtProvides basis for registration on foreign countriesSupplemental Registration Does NotDoes not provide presumption of ownershipDoes not support later claim of incontestabilityDoes not give the exclusive right to use the markCannot request exclusion of imports by the Bureau of Customs

Federal RegistrationAcquired DistinctivenessRegistration based on use and public recognition of mark as indicator of sourceCan be claimed through:5 years of substantially exclusive and continuous use in commerceOwnership of same mark on Principal Register for related goods or servicesSubmission of evidence such as sales figures, advertising, and/or surveys

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Federal RegistrationLikelihood of ConfusionConsider the commercial impression of the markWould the consumer mistakenly believe that the goods or services came from the same source

Two Part TestSAMSUM

Federal RegistrationSound, Appearance and Meaning (SAM)Fashion Fun vs. Fashun FunLutex vs. LutexalWatercare vs. AquacareCapitol Builders vs. Capital Builders

Federal RegistrationSimilar in Nature, Use, and MarketingGoods likely to be marketed, sold or used togetherPurses and luggageCrutches and wheelchairsPeanut butter and jelly

Federal RegistrationSimilar in nature, use, and marketing

Chevrolet BoltStar Bolt (Yamaha)Both the applicants goods and the registrants goods are passenger vehicles moved by internal-combustion engines.As such, the marks for the goods would be used in the same manner, with closely related goods and in closely related channels of trade.- Initial rejection, 86357513

USPTO Tools

USPTO ToolsTrademark Electronic Search System (TESS)Acceptable Identification of Goods and Services Manual (ID Manual) Next GenerationDesign Code Search ManualTrademark Electronic Application System (TEAS)Trademark Status and Document Retrieval (TSDR)

Trademark Electronic Search SystemContains records of active and inactive trademark registrations and applicationsCan search text and images of marksOffers basic, structured or free form searchFree form search page offers explanations and examples

Acceptable Identification of Goods and Services Manual (ID Manual) Next Generation Federal trademarks are registered based upon the class of goods or services being declaredManual lists 45 classes of goods and services

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Design Code Search ManualTrademark designs are searched by codes assigned to describe elements of the markSearchable by keywordContains alphabetical index

01.01.01Stars with three points01.01.02A single star with four points02.01.31Stylized men, including men depicted in caricature form

CELESTIAL BODIES, NATURAL PHENOMENA, GEOGRAPHICAL MAPS; Stars, comets57

Trademark Status and Document Retrieval (TSDR)View all data and documents about a trademark Download all data and documentsBookmark TSDR URLs for future searchesSimultaneously request and review multiple cases

Trademark Electronic Application Systemhttps://www.uspto.gov/trademarks-getting-started/trademark-basics/teas-nuts-and-bolts-videos

Trademark Electronic Application System

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Sources for AssistanceTrademark Information Network (TMIN)https://www.uspto.gov/trademarks-getting-started/process-overview/trademark-information-networkVideo series onlineEnhanced Accessibility VersionsPrintable TranscriptsBasic Facts videos available with Spanish subtitles

Sources for AssistanceTrademark Assistance [email protected]:800-786-9199Monday through Friday 8:30 a.m. to 8 p.m. ET (telephone)General questions about the registration processInquiries about the status of applications and registrations

Tips for Working with an Attorney

How many trademarks have you prosecuted?What are the estimated costs?How will you keep me informed?Do you have references?

Thank You!

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