Trademarks 101:
Everything you’ve always wanted to know about
       trademarks but were afraid to ask


                 ...
Today’s Presenters
•   Kimberly Wieland, Esq.
    –   Senior Director of Trademark Services
    –   kwieland@cscinfo.com

...
Trademarks 101

•   Trademarks Basics

•   Proper Usage

•   Trademark Filing Process

•   Screening and Clearing Trademar...
Intellectual Property

•   Intangible Assets

•   Protectable by law

•   Original and creative thoughts, ideas and
    wo...
Types of Intellectual Property

•   Copyright – protects “original work of
    authorship” ex., literary, music, dramatic,...
Trademarks

•   A trademark identifies and distinguishes a
    specific product from others in the
    marketplace.
•   Tr...
Current Market Trends

        U.S. Trademarks

 450000
 400000
 350000
 300000
 250000
 200000                           ...
Trademark vs. Trade Name

•   Trade name: identifies a company or
    business (KRAFT®)

•   Trademark: identifies the goo...
Word
Name
Symbol
Slogan




         Melts in your mouth.
          Not in your hands.
Design
Device
Sound
Color
Domain




    www.google.com
    www.ebay.com
    www.yahoo.com
   www.amazon.com
Functions of a Trademark

•   Indicates the source of origin of goods or
    services
•   Helps guarantee the quality of g...
Spectrum of Trademark Distinctiveness
& Levels of Protection

       1.   Fanciful/Coined

       2.   Arbitrary

       3...
Fanciful/Coined
Arbitrary
Suggestive
Descriptive
Generic
Likelihood of Confusion

•   Likelihood of confusion is the key to most
    trademark conflicts
•   Famous marks are prote...
Evaluating Potential Consumer
          Confusion
•   Are the goods/services represented by the
    marks related?
•   Do ...
Trademark Use in Marketing




HOW ARE
TRADEMARKS
PROPERLY
USED?
Don’t Leave Your Trademarks
Naked!




  Using these symbols puts the
       industry on notice!
Distinguish Trademarks!

  Bold → CLOROX Bleach
                 ®




  ITALICS → Clorox Bleach
                 ®




AL...
Trademarks are Adjectives,
Not Nouns

       ®
VISINE Eye Drops are excellent for
getting the red out my eyes.
           ...
Trademarks Should Not be Used in
Possessive Form


The acne-clearing power of
          ®
CLEARSIL Gel




              ®...
Trademarks are Not Verbs



TRADEMARKS ARE NOT
  USED AS VERBS –
                   ®
 YOU CANNOT DOVE
    YOUR FACE!
Trademarks Should Not Be Used in
Plural Form


Enclosed are a dozen bottles of
       ®
VISINE Eye Drops




Enclosed are ...
Use Trademarks Exactly as They are
    Registered!

Any material alternation gives a third
party the opportunity to argue ...
Obtaining Trademark Rights

•   Rights are obtained by:
    –   Use
         •   Common Law
    –   Registration
         ...
Common Law Trademarks

•   In the U.S., whoever can establish “First Use”
    in interstate commerce has superior rights.
...
Benefits of Federal Registration

•   Evidence of the validity of the registered
    mark and your ownership to it
•   Nat...
Benefits of Federal Registration
•   Greater recovery of damages for
    infringement, including attorney’s
    fees, othe...
Trademark Application Process

•   Application Filed

•   Application is “Examined”

•   Application becomes approved and
...
Trademark Application Process

•   Trademark is registered for 10 years.
•   Renewals are indefinite as long as
    contin...
International Classifications

•   The US is a signatory to the Nice Agreement
    and uses the International Classificati...
TM Vulnerability

•   Examination: after application
•   Opposition: after publication
•   Cancellation: after registratio...
Trademark Life Cycle

•   Creation                     •   Filing and Registration
    –   Brainstorming                – ...
Screening & Clearing Trademarks
•   Prior to attempting registration or use of a
    TM, you need to screen and clear your...
Screening & Clearing Trademarks

•   Step 1 – Trademark Screening
    –   Conduct a quick “knockout” search using online
 ...
Protecting Your Trademark

•   Post-Registration Protection, Policing &
    Enforcement
    –   Trademark owners are requi...
Trademark Notes

•   CHOOSE DISTINCTIVELY

•   DO YOUR RESEARCH

•   USE YOUR TM PROPERLY WITH ™ OR ®

•   FILE TIMELY AND...
Questions & Answers

     Kimberly Wieland                                       Vanessa Saffold
     Senior Director of T...
About CSC
        •      Privately-held, 110+ year old company headquartered in Wilmington,
               Delaware
      ...
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Trademarks 101: Everything you’ve always wanted to know about trademarks but were afraid to ask

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The right trademark can mean big business, but there's more to getting that "®" than meets the eye. This introductory seminar will explain the basics of trademarks, proper usage, the registration process, and how to screen and clear a mark in today's global -- and increasingly cyber -- economy. Trademarks must be chosen carefully and defended vigilantly.

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Trademarks 101: Everything you’ve always wanted to know about trademarks but were afraid to ask

  1. 1. Trademarks 101: Everything you’ve always wanted to know about trademarks but were afraid to ask Presented by: Kimberly Wieland, Esq. Corporation Service Company Vanessa Saffold Corporation Service Company
  2. 2. Today’s Presenters • Kimberly Wieland, Esq. – Senior Director of Trademark Services – kwieland@cscinfo.com • Vanessa Saffold – Quality Assurance Analyst – vsaffold@cscinfo.com
  3. 3. Trademarks 101 • Trademarks Basics • Proper Usage • Trademark Filing Process • Screening and Clearing Trademarks • Post Registration Protection • Q&A
  4. 4. Intellectual Property • Intangible Assets • Protectable by law • Original and creative thoughts, ideas and works
  5. 5. Types of Intellectual Property • Copyright – protects “original work of authorship” ex., literary, music, dramatic, artistic work. © • Patent – protects inventions – original ideas or new processes ex., machines, formulas, product designs • Trademark - ™ ®
  6. 6. Trademarks • A trademark identifies and distinguishes a specific product from others in the marketplace. • Trademark registration is authorized by Federal Law under the Lanham Act and also by the laws of each State. • Trademark registration can also be accomplished overseas under different international treaties such as the Paris Convention, Vienna Agreement, Nice Agreement, etc.
  7. 7. Current Market Trends U.S. Trademarks 450000 400000 350000 300000 250000 200000 US TM Filings 150000 100000 50000 0 2000 2002 2004 2006 2008
  8. 8. Trademark vs. Trade Name • Trade name: identifies a company or business (KRAFT®) • Trademark: identifies the goods of a company (ALTOIDS®) • Service Mark: identifies the services of a company (Weight WatchersSM)
  9. 9. Word
  10. 10. Name
  11. 11. Symbol
  12. 12. Slogan Melts in your mouth. Not in your hands.
  13. 13. Design
  14. 14. Device
  15. 15. Sound
  16. 16. Color
  17. 17. Domain www.google.com www.ebay.com www.yahoo.com www.amazon.com
  18. 18. Functions of a Trademark • Indicates the source of origin of goods or services • Helps guarantee the quality of goods bearing the mark • Creates and maintains a demand for the product • Used as a Marketing tool to build a brand • Can have great $ value to a company
  19. 19. Spectrum of Trademark Distinctiveness & Levels of Protection 1. Fanciful/Coined 2. Arbitrary 3. Suggestive 4. Descriptive 5. Generic
  20. 20. Fanciful/Coined
  21. 21. Arbitrary
  22. 22. Suggestive
  23. 23. Descriptive
  24. 24. Generic
  25. 25. Likelihood of Confusion • Likelihood of confusion is the key to most trademark conflicts • Famous marks are protected regardless of possible confusion (Coke, Pepsi, etc…)
  26. 26. Evaluating Potential Consumer Confusion • Are the goods/services represented by the marks related? • Do the goods/services compete? • How similar are the marks in sound, appearance and meaning? • How strong is each mark? • How much do the underlying goods/services cost? • Do the two marks share the same customer base? • Does one owner use the mark on several different products or services?
  27. 27. Trademark Use in Marketing HOW ARE TRADEMARKS PROPERLY USED?
  28. 28. Don’t Leave Your Trademarks Naked! Using these symbols puts the industry on notice!
  29. 29. Distinguish Trademarks! Bold → CLOROX Bleach ® ITALICS → Clorox Bleach ® ALL CAPS → CLOROX Bleach ® Underline → Clorox Bleach ®
  30. 30. Trademarks are Adjectives, Not Nouns ® VISINE Eye Drops are excellent for getting the red out my eyes. ® AquaFresh Toothpaste is great for my teeth. ® VISINE is excellent for getting the red out of my eyes.
  31. 31. Trademarks Should Not be Used in Possessive Form The acne-clearing power of ® CLEARSIL Gel ® CLEARASIL’S acne-clearing power
  32. 32. Trademarks are Not Verbs TRADEMARKS ARE NOT USED AS VERBS – ® YOU CANNOT DOVE YOUR FACE!
  33. 33. Trademarks Should Not Be Used in Plural Form Enclosed are a dozen bottles of ® VISINE Eye Drops Enclosed are a dozen VISINES
  34. 34. Use Trademarks Exactly as They are Registered! Any material alternation gives a third party the opportunity to argue that the mark has been abandoned.
  35. 35. Obtaining Trademark Rights • Rights are obtained by: – Use • Common Law – Registration • US Patent & Trademark Office • Individual State Registration • Rights are territorial First party to Use or first to file an application, whichever comes first, has superior rights.
  36. 36. Common Law Trademarks • In the U.S., whoever can establish “First Use” in interstate commerce has superior rights. • All you have to do is begin using it the ™ on your goods to put the public on notice that you believe the mark to be yours. • You would also note the date of First Use in interstate commerce in your records. • Rights are limited to territory of use.
  37. 37. Benefits of Federal Registration • Evidence of the validity of the registered mark and your ownership to it • Nationwide protection of trademark • The right to sue in Federal Court • Use of the circle R symbol: ® • “Incontestability” after 5 years proven continuous use • Priority of use as of the date of the application • Protects the brand and safeguards opportunities for future expansion
  38. 38. Benefits of Federal Registration • Greater recovery of damages for infringement, including attorney’s fees, other statutory damages, and possibly treble damages • The right to claim priority for registration in foreign jurisdictions, and other rights under the Paris Convention • Gives the ability to stop importation of goods which infringe (US Customs)
  39. 39. Trademark Application Process • Application Filed • Application is “Examined” • Application becomes approved and “Published for Opposition” • Application obtains Notice of Allowance
  40. 40. Trademark Application Process • Trademark is registered for 10 years. • Renewals are indefinite as long as continuous use in commerce is provided, or it becomes “generic” – Section 8 & 15 Declarations are filed with USPTO to prove use between 5-6th year • Process = approximately 18-24 months, barring any obstacles • Application fee is $325 per class (electronic); $375 (paper)
  41. 41. International Classifications • The US is a signatory to the Nice Agreement and uses the International Classification system under this agreement • The international classification system is used by 78 countries around the world • Trademark classes are descriptive categories of goods or services • There are currently 45 different IC’s in use • When you file your application you pay by class – Ex. Class 5 pharmaceuticals, 16 paper goods, 25 clothing, 43 restaurants & hotels, etc.
  42. 42. TM Vulnerability • Examination: after application • Opposition: after publication • Cancellation: after registration – Grounds: • Non-use on the goods or services covered by the application/registration • Confusing similarity • Generic/Diluted (aspirin, escalator, etc…)
  43. 43. Trademark Life Cycle • Creation • Filing and Registration – Brainstorming – USPTO • Screening • Protection – Narrow the list – Watching • Clearance • Maintenance – More exhaustive search – Filing renewals • Investigation • Commercial Exploitation – Still in use? – Licensing • Opinion – Available?
  44. 44. Screening & Clearing Trademarks • Prior to attempting registration or use of a TM, you need to screen and clear your mark • Does your proposed mark infringe on another’s rights?
  45. 45. Screening & Clearing Trademarks • Step 1 – Trademark Screening – Conduct a quick “knockout” search using online tools (Federal Trademarks & Internet) • Step 2 - Trademark Clearance Report – Covers Federal, State, Common Law, Domain Names and Internet content • Step 3 – Investigation and Opinion • Step 4 – File for Trademark
  46. 46. Protecting Your Trademark • Post-Registration Protection, Policing & Enforcement – Trademark owners are required to use reasonable efforts to police unauthorized and improper uses of their marks – Trademark/Domain Watching – Internet Policing
  47. 47. Trademark Notes • CHOOSE DISTINCTIVELY • DO YOUR RESEARCH • USE YOUR TM PROPERLY WITH ™ OR ® • FILE TIMELY AND NOTE DATE OF FIRST USE • PROTECT YOUR BRAND
  48. 48. Questions & Answers Kimberly Wieland Vanessa Saffold Senior Director of Trademark Services Quality Assurance Analyst Corporation Service Company Corporation Service Company 800.927.9801 ext. 8655 800.927.9801 ext. 2189 kwieland@cscinfo.com vsaffold@cscinfo.com www.CSCGlobal.com Q&A To ask a question, please type your inquiry into the Q&A panel © Corporation Service Company 2009
  49. 49. About CSC • Privately-held, 110+ year old company headquartered in Wilmington, Delaware • CSC operates offices in the US, Canada, Germany, France and the UK and employs over 1,000 people worldwide • CSC is dedicated reducing risks and costs for our clients by providing: – Corporate Governance & Compliance Services – Corporate Identity Protection Services – Litigation & Matter Management Services – Deal & Transaction Support Services. • The CSC suite of Corporate Identity Protection services includes: – Trademark Screening, Searching and Watching – Internet Brand Monitoring – Domain Name Registration, Management and Monitoring • CSC is the trusted partner of 47 of the Top 100 Best Global Brands* for global domain name registration and management For more information about how CSC can help you protect your brands, please email WebSeminars@CSCInfo.com * As ranked in the Interbrand® 2007 Best Global Brands Report

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