This document discusses trademarks and compares them to copyrights. It covers what a trademark is, how to choose one, how to acquire trademark rights through use or registration, and the registration process. Trademarks can consist of words, symbols, designs, colors, sounds, scents, or product shapes. Choosing a distinctive, unique trademark strengthens its protection. Trademark rights arise through use in commerce and can be registered for additional benefits. The registration process involves applying to the USPTO and demonstrating use of the mark. Copyright protects original creative works but not single words or logos. Trademarks and copyrights can both protect character names and artistic branding elements.

1. HOWARD J. KLEIN
Attorney at Law
Partner: Klein,O’Neill & Singh, LLP
© 2015 Klein, O’Neill & Singh, LLP

2. I. What is a trademark?
II. Choosing a trademark
III. Acquiring a trademark: use and registration
IV. Registration Procedure
V. Copyright vs.Trademark

3.  Any word, phrase,
symbol, design
(“logo”), or
combination that
identifies to the
relevant market a
source of a product or
service
 Serves as a “brand”
(derived from cattle
brand)

4.  Can be a color
 John Deere Greene
 HeinzTurquoise
 Can be aural
 NBC
 Intel
 Can be olfactory
 Can be product design
 Coke
 Can be décor

5.  Vary in strength (in
declining order)
1. Coined/Fanciful words,
Logos
▪ “XEROX,” “EXXON”
▪ Nike “Swoosh”
2. Arbitrary
▪ “APPLE”
3. Suggestive
▪ “MICROSOFT” Software
4. Descriptive
▪ “Tasty Freez” Ice Cream
▪ “Lite” Beer

6.  Generic words/phrases
cannot be trademarked
 “Shredded Wheat”
 Can become generic
▪ Aspirin
 Use trademark as
adjective, NEVER as
noun or verb
 Prevents becoming
generic
 Kleenex
 Velcro

7.  Go for strength
 Search!
 USPTO Database
 Private Search Firms
 Search Engines like
Google®
 Don’t forget URLs!
 Similar/related goods or
services
 Avoid “famous” marks
 “Starbucks” video game?

8.  Priority of use in interstate/international
commerce: Common Law Rights
 Registration: Optional?
 No deadline, but sooner is (usually) better
 Benefits:
▪ Nationwide notice (less likely “innocent” infringement)
▪ Use of ® symbol
▪ Presumptions ofValidity & Ownership
▪ Block infringing imports at point of entry (Principal
Register)

9.  Cannot register
 Generic
 Primarily “merely” a
surname
 Geographically misleading
 Immoral/Scandalous/
Deceptive
 National/Olympic symbols
(even word “Olympic”)
 Names of living persons
(w/o consent)
 “Disparaging”: OK?
 “SLANTS”
 “REDSKINS”

10.  Primary meaning to public
is trademark
 Acquired through exclusive
use/notoriety
 Descriptive
 Pizza Hut
 Surname
 Ford
 Geographically Descriptive
 Florida’s Natural
 Not geographically
misleading
▪ Napa Harvest for OregonWine

11.  Federal: Application to USPTO
 Used in Commerce vs. Intent to Use
 Mark as used/intended to be used
 If used in commerce:
▪ Date of first use, use in commerce, description of goods/services (and
proposed classes), specimen
▪ Examination, allowance, publication, registration
 If “Intent-to-use”
▪ Description of goods/services (and proposed classes)
▪ Examination, publication, allowance, statement of use, registration
▪ Statement of use: date of use in interstate/foreign commerce, with
specimen; 6 mos. from allowance (with extension)
 Help
▪ uspto.gov
▪ Lawyer?

12.  State: if use is solely intrastate
 Protection varies state-by-state (CA pretty good)
 No ®
 Infringement: Likelihood of confusion
 Term:
 Theoretically perpetual (unless abandoned,
“genericized”)
 Fed. Registration: 10 yrs, renewable (Proof of use
needed between 5th and 6th anniversaries of first
registration

13.  Copyright for original “works” of “authorship”
 Ad copy
 Graphic Arts
 Textual Material
 NOT for simple words/phrases/logotypes
 No “common law” copyright
 “Notice” encouraged: Publication w/o notice
may allow “ innocent” infringement
 Remember title slide?

14. HOWARD J. KLEIN
Attorney at Law
Partner: Klein,O’Neill & Singh, LLP
© 2015 Klein, O’Neill & Singh, LLP

15.  Infringement: Copying
 Presumed from substantial
similarity and access
 Registration “optional”
 Needed to file suit
 Statutory damages only if w/in
3 mos. of publication
 If work is a “work made for
hire,” term 95 yrs. from
publication; if not, life of
author plus 70 yrs. No
renewal.
 TM/Copyright overlap-
Characters (“Mickey Mouse”)
and Artistic logos/labels
(“Budweiser” label)

16.  www.koslaw.com
 949-955-1920