Trademark basics


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  • Spectrum of distinctiveness
  • Harjo vs. Pro-Football, Inc.
  • On goods: when placed on container; goods; displays; tags and are sold or transported in commerce. Services: when used or displayed in the sale or advertising.GO TO USPTO.GOV – tons of informationTo apply onlineTo do a search for trademarks
  • A registered mark gives the owner nationwide priorityWhen a business or an individual federally registers a mark with the United States Patent and Trademark Office (the “USPTO”) that predates another person’s use of the same or confusingly similar mark, the registered mark has superior rights throughout the United States. This is important to a business because it gives the business the ability to stop other persons throughout the country from using the registered mark. A registered mark may become incontestableAfter five years of continuously a mark, the owner of such mark can apply for incontestability status. If incontestability is granted, you may be able to eliminate most of the difficult and expensive to defend challenges to your mark.A federally registered mark gives the owner the automatic right to sue in federal court. Attorneys believe that federal courts provide procedural advantages over state courts. Without a federally registered trademark the owner does not have the automatic right to sue in federal court. In sue in federal court without a federally registered trademark may be more costly when proving jurisdiction.  Enforcement of Registered trademarks by U.S. Customs and Border Protection (“U.S. Customs”). The owner of a federally registered trademark may record her trademark with U.S. Customs. After recording, U.S. Customs will monitor and seize merchandise bearing counterfeit and unregistered marks and issue monetary fines against anyone who attempts to introduce counterfeit goods into the U.S.. Attorney fees and court costs for having to file a suit against infringers The default rule in the US is that each party bears their own litigation costs regardless of outcome. With a federal trademark registration, it is possible to recover an infringement award for triple the amount of your actual damages, plus attorneys fees if someone infringes your mark. Practically speaking, such an award is quite rare, and requires a showing of willful trademark infringement. Nevertheless, it is precisely in these most egregious abuses of your mark that you would like to have the power to recover maximum damages, and doing so is only possible with a registration.Actual damages and infringer profits can be difficult to prove due to the inherent intangibility of copyrights. Therefore, treble damages may be helpful in leveraging a quick and effective settlement against infringers of your work. Also, being entitled to statutory damages and attorney’s fees may make it easier to hire an attorney who is willing to take your case on a contingency basis.Registration in other countries using the U.S. registration dateWhen a U.S. business expands internationally, the business’ marks may already be registered in the country of desired expansion due to trademark piracy. The date of registration of the U.S. mark becomes the date of priority in the new country if that country is a member of certain international treaties. As such, even if a trademark pirate registers in a country before a business actually expands there, the U.S. company's priority date may precede the date of the pirate's registration, thus giving the U.S. company ultimate priority.
  • Trademark basics

    1. 1.  Presented by:  Derek Fahey, Esq.  Fahey Business Law and Intellectual Property
    2. 2.  Copyright:  Protects original works of authorship fixed in any tangible medium of expression.  Duration: life of the author plus 70 years (if created after 1978)  Patent  Protects any useful, new and non-obvious invention  Types of patents: design, utility, plant  Duration: 14 – 20 years depending on the type of patent  Trademark  Any word, symbol, name or device used in trade to identify and distinguish the source of goods.  BRANDING  Duration: as long as it is used in commerce in connection with the product or service. The Difference Between Trademarks, Copyrights and Patents
    3. 3. Trademark Overview  Primary function – used for consumers to identify a good or service with the source of such good or service.  Consumers expect a uniform quality and standards of services associated with a trademark.  One of the purposes of trademarks is to prevent confusion of the source of the good or service.  BRANDING
    4. 4. Obtaining Trademark rights  Trademark rights may be obtained at common law when a business or individual uses a particular mark to identify or distinguish its goods or services.  Common law rights can be limited to geographic location used. If used nationally, then protection is national. If used only locally, then protection is local.  First to use the mark has priority to the mark.
    5. 5. Spectrum of Distinctiveness  A mark must de distinctive for it to be protected.  It must be used to identify and distinguish the source of a particular good and service  Two paths for distinctiveness  Inherently distinctive  Acquired distinctiveness  Long time use of a mark with a product comes to be known by the public as specifically designating that product.  Example “Fish-fri”
    6. 6. Weak vs. Strong Marks  Descriptive or Generic: words that merely describe the good or service (Weak mark)  Example: “Energy Drink” ; “South Florida Title Loan Company” “Aspirin”  Suggestive: words that suggest some aspect of the good or service to which it applies. Requires some imagination. For example, “Coppertone”.  Arbitrary or fanciful  Words that bear no relationship with the type of product or service to which they apply. For example, “Apple” for computers. (Strong Mark)
    7. 7. What can be Registered as a Trademark?  Color  Sound  Logo  Word or phase  Packaging  Under trade dress  Look and feel of something  Apple Store
    8. 8. Exclusions from Registration  Scandalous, Disparaging and Deceptive marks  Marks that mislead., e.g., Swiss for watches made in China.  Marks using a person’s name without permission., i.e.“Bo Ball”  “Redskins” for a football team.  Marks in similar or same class of goods or services as a registered mark that are likely to confuse consumers  Descriptive or generic marks.
    9. 9. How to Register a trademark  Do a trademark search (  Helps determine the probability of the mark being registered  Apply “Likelihood of Confusion” test with marks found in the search  Decide on the whether service vs. trademark  Decide on “intent to use” vs. use based application  Is there a bona fide use of the mark in commerce?  Decide on the class of the goods  Marks can be protected under more than one class
    10. 10. Benefits of Federally Registered Trademark  Enhanced remedies against infringes  May make it easier to hire a lawyer on contingency  Nationwide right and protection of the mark  Benefits in litigation  Presumption of validity  May become incontestable  Enforcement of registered marks by U.S. Customs and Border Protection
    11. 11. When to think about your Trademark? NOW!!!!!