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Trademarks - The Basics
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Trademarks - The Basics

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Explores naming (company, trade or business), domain name registration, what constitutes a trademark, selecting a trademark, trademark availability, and registering trademarks.

Explores naming (company, trade or business), domain name registration, what constitutes a trademark, selecting a trademark, trademark availability, and registering trademarks.

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  • 1. WilmerHale Brown Bag Lunch Series: Trademarks – The Basics March 28, 2012 Attorney Advertising
  • 2. What Is a Company Name, Trade Name, or Business Name?  It is the name used by a company in its business activities  A trade name cannot be registered as a trademark unless it also functions as a trademark E.g., Apple Computer, Inc. owns Apple® computers © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 2
  • 3. Domain Name Registration (URL)  Registrar does not clear use of name  Use of domain name is not trademark use  Should independently search to avoid third party action © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 3
  • 4. What Is a Trademark? Just as your own name identifies and distinguishes you, a trademark:  Indicates the source or origin of goods or services  Assures consumers of the quality of goods bearing the mark  Creates business goodwill and brand awareness © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 4
  • 5. What Is a Trademark?  Word  Symbol  Slogan JUST DO IT.  Product or packaging design that identifies a specific product and distinguishes it from others in the marketplace © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 5
  • 6. Selecting a Mark less distinctive Generic Descriptive more distinctive Suggestive Arbitrary Fanciful CARPET CLEANING COMPANY The more distinctive the mark, the greater its level of legal protectability © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 6
  • 7. Descriptive vs. Suggestive  Suggestive marks are automatically protectable and registrable  Descriptive marks may be protected and registered only upon a showing of secondary meaning (acquired distinctiveness) © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 7
  • 8. Trademark Availability A trademark is not available if:  The mark or confusingly similar mark is already federally registered or is the subject of a pending federal registration (assuming that the application is ultimately accepted); or  The mark or confusingly similar mark is already being used in the same market in connection with similar goods or services. © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 8
  • 9. Trademark Searches  Preliminary USPTO TESS (Trademark Electronic Search System) www.uspto.gov/trademarks/index.jsp  International search  Country-specific search – Trademark registers (federal and state) – Common-law uses – Internet, domain names – Corporate names © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 9
  • 10. © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 10
  • 11. How Are Trademark Rights Obtained? Rights are obtained either:  By registration; or  By use  Note: Corporate registration is not trademark use © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 11
  • 12. Why Register – Federal Right to use the mark in all 50 sates  Notice of registration: ®  Provides notice to 3rd parties conducting searches  Right to bring suit in Federal Court  Right to importation remedies – Deposit copies of the registration with the United States Customs Service to prevent importation of goods bearing an infringing mark © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 12
  • 13. Federal Registration  Online form at www.uspto.gov/trademarks/index.jsp  Filing Basis – Use – Intent to Use – Identification of goods or services – must be specific enough to identify the nature of the goods or services – International Class System – match to goods and/or services Wilmer Cutler Pickering Hale and Dorr LLP is a Delaware limited liability partnership. WilmerHale principal law offices: 60 State Street, Boston, Massachusetts 02109, +1 617 526 6000; 1875 Pennsylvania Avenue, NW, Washington, DC 20006, +1 202 663 6000. Our United Kingdom offices are operated under a separate Delaware limited liability partnership of solicitors and registered foreign lawyers authorized and regulated by the Solicitors Regulation Authority (SRA No. 287488). Our professional rules can be found at www.sra.org.uk/solicitors/codeof-conduct.page. A list of partners and their professional qualifications is available for inspection at our UK offices. In Beijing, we are registered to operate as a Foreign Law Firm Representative Office. This material is for general informational purposes only and does not represent our advice as to any particular set of facts; nor does it represent any undertaking to keep recipients advised of all legal developments. Prior results do not guarantee a similar outcome. © 2014 Wilmer Cutler Pickering Hale and Dorr LLP © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 13

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