Transcript PowerPoint Presentation - Chamberlain Legal Services

Trademark Basics
June 4, 2013
Christina Chamberlain, JD/MBA
University of Phoenix Instructor Assessment
Agenda
What is Intellectual Property?
What are Trademarks?
Obtaining a Trademark
Whether 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 Domain
 Most 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 Copiers
 Fanciful
Apple for Computers
 Arbitrary
Sure for Deodorant
 Suggestive
All are inherently distinct and protectable
Name some more…..
Trademark Searches
In order to avoid trademark infringement,
you must do more than avoid known
marks
 Perform a trademark search in the USPTO
 Search state registrations
 Search 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
Trademarks
 Make sure your mark is protectable
 Make sure you mark is not owned by
anyone else
 Protect valuable marks with trademark
registration