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Ln1 #1389046-v2-ten trademark-tips_for_business_owners_-_presentation_for_the_montgomery_bar_association
- 1. Ten Trademark Tips
for Business Owners
December 14, 2012
Presented by
Lindette C. Hassan, Esq.
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 2. What is a Trademark?
Trademarks identify products or services in the minds
of potential consumers, and distinguish them from the
goods and services of others.
A service mark is the same as a trademark, except that
it identifies and distinguishes the source of a service
rather than a product. Throughout this presentation, the
terms "trademark" and "mark" refer to both trademarks
and service marks.
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 3. Tip #1
It is highly advisable to protect any trademark
used in connection with a good or service.
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 4. Tip # 2
When deciding to protect a trademark, it
is necessary to determine the level of
protection needed.
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 5. Tip # 2 (Cont.)
Three Levels of Trademark Protection
- 1. Common Law
No registration needed
Use required
Very limited rights
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 6. Tip # 2 (Cont.)
Three Levels of Trademark Protection
- 2. State
Registration required
Use required
Renewable
Limited rights
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 7. Tip # 2 (Cont.)
Three Levels of Trademark Protection
- 3. Federal
Registration required
Covers the entire United States
Renewable
Interstate commerce necessary
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 8. Tip # 3
When choosing a trademark for a good
or service, thought should be given to the
strength of the mark.
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 9. Tip # 3 (Cont.)
Types of Trademarks
- Generic
Ex: Diet Chocolate Fudge Soda
- Descriptive
Ex: Security Center
- Suggestive
Ex: Coppertone
- Arbitrary/Fanciful
Ex: Xerox; Kodak
Generic<Descriptive<Suggestive<Arbitrary/Fanciful
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 10. Tip # 4
Certain marks cannot be protected or
registered as a trademark.
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 11. Tip # 4 (Cont.)
Marks that cannot be protected as a
Trademark include:
- Generic marks
- Deceptive marks, including deceptively
misdescriptive and geographically
misdescriptive marks
- Morally or culturally offensive marks
- Marks that are confusingly similar or likely to
dilute another mark
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 12. Tip # 5
Certain marks may be registered on the
Principal Register only after they acquire
distinctiveness.
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 13. Tip # 5 (Cont.)
Principal Register
- Presumption of ownership
- Exclusive right to use the mark throughout
the U.S.
- Right to receive treble damages
- After 5 years of registration, the mark is
deemed incontestable
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 14. Tip # 5 (Cont.)
Marks that may be registered on the Principal
Register only after they acquire distinctiveness
include:
- Marks that are descriptive of the products or
services for which they are used, or of a quality or
feature of those products or services
- Marks that are primarily a common surname
- Marks that name a geographic place, including most
U.S. place names and well-known foreign place
names
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 15. Tip # 5 (Cont.)
Supplemental Register
- Secondary Register
- Same rights as common law, with a few
exceptions
Eligible to use ®
- After 5 years on the Supplemental Register,
eligible to reapply for the Principal Register
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 16. Tip # 6
Make sure the “TM”, “SM”, and ®
symbols are used correctly.
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 17. Tip # 6 (Cont.)
TM – used on unregistered or state-
registered trademarks or service marks
SM – used on unregistered or state-
registered service marks
® - used only on Federally registered
trademarks and service marks
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 18. Tip # 7
If a business owner plans to sell goods or
provide services in interstate commerce,
an Intent-to-Use trademark application is
advisable.
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 19. Tip # 7 (Cont.)
Intent-to-Use Applications
- Federal only
- Allows business owner to “hold place in line”
- Actual use is necessary before registration is
granted
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 20. Tip # 8
It is highly advisable to do a trademark
search when deciding upon the name of
a business.
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 21. Tip 8 (Cont.)
Trade Name – The name under which a
business operates for commercial
purposes
- Ex: Pepsi Co.
It is possible for a Trade Name to infringe
on a trademark
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 22. Tip # 9
When determining whether a potential
business name or mark is confusingly similar to
another mark, it is necessary to consider:
- Spelling;
- Pronunciation;
- Foreign equivalents;
- Long-form words for any acronym or the meaning of
any abbreviations; and
- The goods or services offered.
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 23. Tip # 10
Trademark protection/registration is only
as good as the business owner wants it
to be.
- USPTO will stop others from trying to
register similar marks
- However, business owners need to be
proactive to protect their marks
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild
- 25. Contact Information
Lindette C. Hassan, Esq.
610.397.6518
lhassan@foxrothschild.com
Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild