Trademark protection basis and strategy tips for strong brands and strong trademark protection

1. based on Presentation at Intellectual Property & Inventors Conference
Idaho Falls, ID
ELIZABETH HERBST SCHIERMAN
US Patent Attorney
© 2018 E.H.Schierman

2.  A senior owner of a trademark generally has the right
to stop a junior user from using the trademark or one
similar if likely to cause confusion with the senior
owner’s trademark
 Senior = earlier
 Junior = later

3.  Trademark rights are based on use
 Trademarks may be registered ( ® ) or unregistered
(common lawTM)
 Registration impacts the scope of the “use”
 Registration ®
 State
 Federal

4.  Essentially any indication of the source, origin,
sponsorship, or endorsement of goods/services
 Logos
 Business names
 Abbreviations
 Product names
 Packaging designs
 Sounds / jingles
 Colors
 Smells /Tastes /Textures ?

5.  Strength and enforceability largely based on how
quickly/easily consumer will associate the mark with
the goods/services
 Very quickly = very weak (or no) trademark rights
 Not quickly = very strong trademark rights

6.  Generic marks
 Mark is exactly what the goods/services are
▪ The name everyone else should be able to use
 No trademark rights
 Examples:
▪ “Apple” for the fruit of an apple tree
▪ “E-mail” for electronically-transmitted messages

7.  Descriptive marks
 Mark describes the goods/services
 Trademark rights only with acquisition of secondary
meaning
▪ Public associates the mark as an indication of source
of the goods/services, rather than the goods/services
themselves
 Examples:
▪ “Juicy” for the fruit of an apple tree
▪ “WINDOWS” for windowing software
▪ Has acquired secondary meaning

8.  Surnames
 Treated like a descriptive mark
 Trademark rights only with acquisition of secondary
meaning
▪ Public associates the surname as an indication of
source of the goods/services, rather than the
goods/services themselves
 Examples:
▪ “McDONALD’S” for fast dining restaurants
▪ “HILTON” for hotels

9.  Suggestive marks
 Mark suggests a quality or characteristic of the
goods/services
 Trademark rights due to inherent distinctiveness
 Example:
▪ “MICROSOFT” suggesting software for
microcomputers

10.  Arbitrary marks
 Has an ordinary meaning that is not related to the
goods/services
 Trademark rights due to inherent distinctiveness
 Examples
▪ “APPLE” for computers
▪ “AMAZON” for online retailer

11.  Fanciful marks
 Brand new mark having no previous meaning
 Strongest trademark rights due to inherent
distinctiveness
 Examples:
▪ “EXXON” for oil company
▪ “HÄAGEN-DAZS” for ice cream

12.  Make up a new word
 Make your logo unique
 Use an existing word in a wholly new context
 Use new spelling

13.  Problem:
 Strongest marks can be most difficult for consumers
to associate with goods/services
 Solution:
 Use the strong mark along with descriptive words
 But also use the mark on its own
 E.g., “VRT-X shoe insoles”

14.  Will you ever sell your business?
 Then don’t use a surname
 Will you ever move your business?
 Then don’t use a location-specific mark
 Will you ever expand your offerings?
 Then don’t focus trademark on only first product

15.  Will you offer your goods/services to speakers of another
language?
 Consider what the trademark means and sounds like in other
languages
▪ E.g., “Chevy NOVA” = “ChevyWon’t Go” in Spanish
 Where will your trademark appear?
 Does your logo need to work as an app icon as well as in
letterhead?
 Is your font clearly readable in signage as well as on your
packaging?
 Can your trademark appear in other colors or black/white?

16.  Many companies have both word marks (e.g.,
“APPLE”) and design marks (e.g., )
 Word marks generally have broader protection (style
doesn’t matter) but can be harder to secure if similar
to other marks
 Design marks may be easier to register due to
distinctiveness, but narrower protection

17.  Before investing time and money on a new mark,
conduct a trademark search
 Search yourself
 Enlist services of a trademark law professional
 What to search: registered marks, unregistered
marks, business names, domain names, competing
products/services name registries

18.  What to look for in a search:
 Similar spellings
 Similar pronunciations
 Similar look
 Similar goods/services
 Other similarities

19.  Once you begin to use a mark, keep records of:
 Date of first use anywhere
 Date of first use in interstate commerce
 Specimens showing use of the mark in association
with the goods/services

20.  The sooner you apply, the sooner you can have
benefits of registration
 Process relatively quick and inexpensive (vs.
patenting)
 ~$275 fee, per class of goods/services
 ~1 to 1 ½ year process
 Intent-to-use applications
 Be careful in description of goods/services

21.  Only one trademark can be included in a trademark
application
 (No limit on number of goods/services in a single
application)
 Prioritize the trademark(s) that a competitor is most
likely to use (innocently or not) in a manner that is
likely to harm your business

22.  ® is for registered trademarks
 “TM” may be used with trademarks that are not
registered

23.  Monitor the quality of the goods/services
 Particularly if you are allowing others to use the
trademark
 Monitor for infringement

24.  Consult your trademark counsel if you:
 Change the mark (wording, spelling, design)
 Change the goods/services
 Change the owner
 May necessitate change to registration

25.  Maintain trademark registrations
 Statements of use
 Specimens of use
 Fees
 Continue use of trademark
 Cessation of use can result in abandonment
 Hence, “throw-back” labels

26.  Are you going to offer the goods/services in other
countries?
 Would it hurt your business for others to use your
trademarks in other countries?
 Generally, can apply for foreign registration with
benefit to U.S. filing within 6 months of U.S. filing

27.  Ever heard of these lost trademarks?
 CELLOPHANE
 ESCALATOR
 Don’t use your trademark in a generic sense
 Don’t let others use your trademark in a generic sense

28.  Examples:
 BAND-AID v. bandage
 VELCRO v. hook-and-loop fastener
 GOOGLE v. web browse
 KLEENEX v. tissue
 XEROX v. photocopy

29. Elizabeth Herbst Schierman
US Patent Attorney
www.linkedin.com/in/EHSchierman
© 2018 E.H.Schierman