Transcript Fair Accurate Consistent Timely Supported

Trademarks
October 18, 2005
Presented by:
Jeanne M. Hamburg
Norris, McLaughlin & Marcus, P.A.
875 Third Avenue
New York, New York
(212) 808-0700
[email protected]
Jeanne M. Hamburg, Esq.
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Specializing In:
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All aspects of copyright and
trademark law
both in litigation and in the
transactional area
Program
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What is a trademark
Types of marks
Comparison: Trademarks, Copyrights,
Choosing a mark
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Distinctiveness
Confusion
Searching and Clearance
Proper Trademark Usage
Obtaining Protection
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Common law rights
Registration and procedure
What is a trademark?
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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
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Best choice:
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Arbitrary/fanciful –
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Suggestive – gives a hint of what the product is,
but is not merely descriptive –
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Acrobat® software, Exxon® fuels
Molyvan®, Vancote®
Can not be generic or merely descriptive
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‘Super Strong’
Diet Chocolate Fudge Soda
Sound marks
Trademarks versus Copyrights
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Trademark –
“indication of source”
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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
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Copyright –
“original expression of
an idea”
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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?
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Consumer’s perspective:
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Reputation for quality
Recognition of product – distinguish from
competitors
Trademark owner’s perspective:
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Provide a competitive advantage
Valuable corporate asset
How are trademark rights created?
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‘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.
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‘Registration’ – evidence of the validity of
trademark rights.
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registration will not grant unless actual use in commerce
has commenced.
registration is recommended, but not required
Selecting a trademark
Arbitrary/fanciful –
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Acrobat® software, Exxon® fuels, Sprite® soft drink
Suggestive – gives a hint of what the product is, but
is not merely descriptive –
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Ty-D-Bowl® cleaner, Rollerblades® in-line skates
Descriptive with “acquired distinctiveness”
American Airlines®
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Can NOT be generic or merely descriptive
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Gummy Bears or Super Strong
Selecting a Trademark
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Must not be confusingly similar to existing
trademarks used on related goods.
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Are the marks related
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Are the goods related
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Visual appearance, sound-alike?
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
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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
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Recommend to follow up with outside
search (Thomson &Thomson®), which will
find phonetically similar marks
Clearing a new mark
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Searching
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‘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
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‘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
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Why? – improper use can lead to loss of
exclusive rights – mark becomes generic,
and everyone can use it
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Lost - aspirin, cellophane, escalator,
thermos, linoleum
Saved – Xerox® copiers, Band-Aid®
bandages, Rollerblade® in-line skates
Proper Trademark Usage
How?
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DO
Use as an adjective modifying a generic
noun: Xerox® copiers
 Set apart from other text:
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Initial capital
Xerox® copiers
All caps
XEROX® copiers
Bold, or different font Xerox® copiers
Proper Trademark Usage
How?
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DO NOT
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Use as a noun or verb
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“Give me a xerox”
“I am xeroxing that now”
Use in the plural
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Incorrect - Three xeroxes
Correct – Three Xerox copies
® – when to use
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® 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
™
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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
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Genericide
Abandonment
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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
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If registration is optional, why do it?
Procedural advantages
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Presumption of validity – do not need to prove
protectable right in court –
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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
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Form of mark (word, design, colors)
Description of goods and services
Classification
Fees
Basis
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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
Prior Conflicting
Marks
File Application
Substantive
Descriptiveness
or Functionality
Examination
Classification
Formal
Approval and
Publication
Opposition
Period
Third parties
may oppose
based on prior
rights or other
objections
Goods and
Services
Description
Basis
(specimens of
use)
Opposition Period
Basis – actual
use or foreign
registration
Registration
Basis – intent
to use
Notice of Allowance
6th Year Affidavit of
Use
Statement of Use
Renewal and Affidavit
of Use – every 10
years after registration
Resources
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McCarthy on Trademarks
USPTO website http://www.uspto.gov
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TMEP – Trademark Manual of Examining
Procedure
Classification – Manual of Goods and Services
Searching
Status
INTA – International Trademark Association
website http://www.inta.org