Presentation
Download
Report
Transcript Presentation
Tantalizing Trademark To-Do’s
April 12, 2013
Timothy M. Donoughue
Intellectual Property Senior Counsel
But first, a word from our sponsor:
All this is Tim’s opinion only, not the view
of BHI, and not on the record.
Trademarks
TM
Definition of Trademark:
Any mark which
Identifies and distinguishes goods
or services
Indicates source of good or services
®
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
Trademark v. Service Mark
A “Service Mark” is a mark that
designates services only
A “Trademark” is a mark that
designates goods
However (just to be confusing),
“Trademark” can also be a mark that
designates services or both goods and
services
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
1. Don’t Miss a Mark!
Definition of mark is very broad.
Marks can now include sounds, colors
Marks can be found
within other marks
Logos or slogans
Stylizations
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
2. Do Know Your Country
In US, trademark rights are acquired by
use—no registration required
In RU, trademark rights are acquired by
registration—use gives no rights
In BR, the trademark office does not
send notices, they publish them
In EP, the trademark office covers
several countries
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
3. Do Understand the Goods/Services
Trademarks’ effects are limited to their
particular goods and services
In US, limited to actual use
Can be multiple goods/services
Part of a clearance search
Example:
DELTA faucets
DELTA power tools
DELTA airlines
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
4. Do Docket, Docket, Docket
Accurate docketing is critical
Avoids
loss of rights in dates
Lowers cost
Critical to double check automatic
docketing
Ensure that the country selection is
correct
Make sure the dates look right
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
5. Don’t Ever Abuse Marks
We must be models to our clients of
how to use trademarks correctly
Brochures
Emails
Memos
Letters
How the clients see the mark used
influences how they in turn use it
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
Grammar Lesson
All trademarks are adjectives
Use with generic name of
product/service
“We ran the XMAC tool.”
Not -- “We will ship ten XMACs.”
Never use as a possessive, plural, verb
or noun
Don’t “xerox it”; make a
“photocopy”
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
Proper Use of Marks
Distinguish in print
CAPS or italics
Include trademark notice
TM, SM or ®
® only
marks
for registered
Give notice of company
ownership if not obvious
Footnote with “TESTRAK is
a service mark of Baker
Hughes Incorporated”
SM
™
®
6. Do Know Trademark Infringement
Likelihood of confusion
Exact match not required
Must be within same market
Similar to unfair competition
If you suspect something
see your attorney!
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
8. Do Learn the USPTO Online
www.uspto.gov
Under Trademarks
TESS – to
search
TEAS – to file
TSDR – to check the status
Then under Manuals, Guides…
TMEP
Acceptable ID of Goods/Services
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
7. Do Keep Your Attorney Informed
Attorney-Client privilege
Extends
to “one employed by the
lawyer to assist” with legal services.
TRE 503
Attorney work product
Extends to the work product of an
“attorney’s representative”. TRCP
192.5
For those to apply, you must be under
the supervision of the attorney!
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
9. Do Know a Proper Specimen
In US (Office is very particular on this)
Specimen must show the mark
Used
on or in connection with the
sale of goods
Label, tag, stamp
Not an ad, website except in
limited cases!
In the sale or advertising of the
services
TMEP 904.07(a)
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
10. Do Ask for Help!
Very complex area
Particularly in docketing
Especially with new jurisdictions
A question now saves much grief later!
Questions?
Tantalizing Trademark Tidbits
April 12, 2013
Timothy M. Donoughue
Intellectual Property Senior Counsel