TrademarksTrademarksPresented by:

Jeanne M. HamburgNorris, McLaughlin & Marcus, P.A.

875 Third AvenueNew York, New York

(212) 808-0700jhamburg@nmmlaw.com

Jeanne M. Hamburg, Esq.

Specializing In: All aspects of copyright and

trademark law both in litigation and in the

transactional area

Program

What is a trademark Types of marks Comparison: Trademarks, Copyrights, Choosing a mark

Distinctiveness Confusion Searching and Clearance

Proper Trademark Usage Obtaining Protection

Common law rights Registration and procedure

What is a trademark?

Anything that serves as an “indication of source”

Most commonly a word: Exxon, Mountain

Dew, Starbucks, Intel a logo:

Color marks

Packaging / configuration marks

Selecting a trademark

Best choice: Arbitrary/fanciful –

Acrobat® software, Exxon® fuels Suggestive – gives a hint of what the product is,

but is not merely descriptive – Molyvan®, Vancote®

Can not be generic or merely descriptive ‘Super Strong’ Diet Chocolate Fudge Soda

Sound marks

Trademarks versus Copyrights Trademark –

“indication of source” created by use in

commerce in connection with a product or service

Registration is optional Application for

registration may be filed at any time

Duration – renewable indefinitely with continued use

Copyright – “original expression of

an idea” Protection is automatic

from moment of creation Registration is optional,

though is required for litigation

Application may be filed at any time (but preferably within 3 months of publication)

Duration – life of author plus 70 years

Why protect trademarks?

Consumer’s perspective: Reputation for quality Recognition of product – distinguish from

competitors

Trademark owner’s perspective: Provide a competitive advantage Valuable corporate asset

How are trademark rights created? ‘Use in commerce’ – in the U.S., trademark

rights can be created by simply using the mark in association with goods or services, such that the public considers the mark to be associated with a single provider.

‘Registration’ – evidence of the validity of trademark rights. registration will not grant unless actual use in commerce

has commenced. registration is recommended, but not required

Selecting a trademark Arbitrary/fanciful –

Acrobat® software, Exxon® fuels, Sprite® soft drink

Suggestive – gives a hint of what the product is, but is not merely descriptive –

Ty-D-Bowl® cleaner, Rollerblades® in-line skates

Descriptive with “acquired distinctiveness”

American Airlines®

Can NOT be generic or merely descriptive Gummy Bears or Super Strong

Selecting a Trademark

Must not be confusingly similar to existing trademarks used on related goods. Are the marks related

Visual appearance, sound-alike? Are the goods related

Trade channels, marketing channels, compare likely purchaser group

Other factors – sophistication of purchasing group, selling price, impulse vs. careful purchaser

Likelihood of confusion – would consumers believe that the two products come from the same source

Clearing a new mark Searching –

pending trademark applications and granted registrations are searchable in the United States Patent and Trademark Office (http://www.uspto.gov)

‘Knock-Out’ search – PTO website best used for finding direct hits Recommend to follow up with outside

search (Thomson &Thomson®), which will find phonetically similar marks

Clearing a new mark

Searching ‘Common law’ marks- third party rights

may also exist in non-registered marks. Sources: Google™ search, Lexis®/Nexis®, industry publications, Thomson & Thomson®

Clearing a new mark

‘In Use’ investigation – registered marks may be invalid – confirm current use through Internet or outside investigator.

Opinion – experienced trademark counsel can give guidance as to descriptiveness and confusion issues

Proper Trademark Usage

Why? – improper use can lead to loss of exclusive rights – mark becomes generic, and everyone can use it

Lost - aspirin, cellophane, escalator, thermos, linoleum

Saved – Xerox® copiers, Band-Aid® bandages, Rollerblade® in-line skates

Proper Trademark Usage

How?

DO Use as an adjective modifying a generic

noun: Xerox® copiers Set apart from other text:

Initial capital Xerox® copiers All caps XEROX® copiers Bold, or different font Xerox® copiers

Proper Trademark Usage

How?

DO NOT Use as a noun or verb

“Give me a xerox” “I am xeroxing that now”

Use in the plural Incorrect - Three xeroxes Correct – Three Xerox copies

® – when to use

® indicates that a trademark is registered in the USPTO. It must not be used unless the mark is registered.

It is suggested to use ® where appropriate (gives notice to the public), though it is not required.

TM, SM © - when to use

™ may be used for unregistered marks. Has no legal effect

SM may be used for unregistered ‘service marks’ in place of TM, but there is not really a legal distinction

© relates to copyright, not trademark rights.

Loss of rights

Genericide Abandonment

Usually 3-5 years of non-use may be grounds for cancellation

Discontinue use with no intention to resume use “Naked licensing” – authorized use by a

licensee does not go to benefit of trademark owner if not “controlled and monitored” – can lead to abandonment

Registration – United States If registration is optional, why do it? Procedural advantages

Presumption of validity – do not need to prove protectable right in court –

this is a major cost incentive Constructive notice nationally Incontestable after 5 years – others can not

attack the registration except on narrow grounds of genericness and fraud

Registration - basics

Form of mark (word, design, colors) Description of goods and services Classification Fees Basis

Actual use in commerce Intent to use (must follow up with actual use) Foreign registration basis (only available to

foreign entities) – no use required for registration

File ApplicationFile Application

ExaminationExamination

Approval and Publication

Approval and Publication

Opposition Period

Opposition Period

SubstantiveSubstantive

FormalFormal

Prior Conflicting Marks

Prior Conflicting Marks

Descriptiveness or Functionality

Descriptiveness or Functionality

ClassificationClassification

Goods and Services

Description

Goods and Services

Description

Basis (specimens of

use)

Basis (specimens of

use)

Third parties may oppose

based on prior rights or other

objections

Third parties may oppose

based on prior rights or other

objections

Opposition PeriodOpposition Period

RegistrationRegistration

6th Year Affidavit of Use

6th Year Affidavit of Use

Renewal and Affidavit of Use – every 10 years

after registration

Renewal and Affidavit of Use – every 10 years

after registration

Notice of AllowanceNotice of Allowance

Statement of UseStatement of Use

Basis – actual use or foreign registration

Basis – intent to use

Resources

McCarthy on Trademarks USPTO website http://www.uspto.gov

TMEP – Trademark Manual of Examining Procedure

Classification – Manual of Goods and Services Searching Status

INTA – International Trademark Association website http://www.inta.org