Ln1 #1389046-v2-ten trademark-tips_for_business_owners_-_presentation_for_the_montgomery_bar_association

415 views

Published on

0 Comments
0 Likes
Statistics
Notes
  • Be the first to comment

  • Be the first to like this

No Downloads
Views
Total views
415
On SlideShare
0
From Embeds
0
Number of Embeds
2
Actions
Shares
0
Downloads
8
Comments
0
Likes
0
Embeds 0
No embeds

No notes for slide

Ln1 #1389046-v2-ten trademark-tips_for_business_owners_-_presentation_for_the_montgomery_bar_association

  1. 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. 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. 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. 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. 5. Tip # 2 (Cont.) Three Levels of Trademark Protection - 1. Common Law  No registration needed  Use required  Very limited rightsTen Trademark Tips for Business Owners© 2011 Fox Rothschild
  6. 6. Tip # 2 (Cont.) Three Levels of Trademark Protection - 2. State  Registration required  Use required  Renewable  Limited rightsTen Trademark Tips for Business Owners© 2011 Fox Rothschild
  7. 7. Tip # 2 (Cont.) Three Levels of Trademark Protection - 3. Federal  Registration required  Covers the entire United States  Renewable  Interstate commerce necessaryTen Trademark Tips for Business Owners© 2011 Fox Rothschild
  8. 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. 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/FancifulTen Trademark Tips for Business Owners© 2011 Fox Rothschild
  10. 10. Tip # 4 Certain marks cannot be protected or registered as a trademark.Ten Trademark Tips for Business Owners© 2011 Fox Rothschild
  11. 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 markTen Trademark Tips for Business Owners© 2011 Fox Rothschild
  12. 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. 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 incontestableTen Trademark Tips for Business Owners© 2011 Fox Rothschild
  14. 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 namesTen Trademark Tips for Business Owners© 2011 Fox Rothschild
  15. 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 RegisterTen Trademark Tips for Business Owners© 2011 Fox Rothschild
  16. 16. Tip # 6 Make sure the “TM”, “SM”, and ® symbols are used correctly.Ten Trademark Tips for Business Owners© 2011 Fox Rothschild
  17. 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 marksTen Trademark Tips for Business Owners© 2011 Fox Rothschild
  18. 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. 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 grantedTen Trademark Tips for Business Owners© 2011 Fox Rothschild
  20. 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. 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 trademarkTen Trademark Tips for Business Owners© 2011 Fox Rothschild
  22. 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. 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 marksTen Trademark Tips for Business Owners© 2011 Fox Rothschild
  24. 24. QUESTIONSTen Trademark Tips for Business Owners© 2011 Fox Rothschild
  25. 25. Contact Information Lindette C. Hassan, Esq. 610.397.6518 lhassan@foxrothschild.comTen Trademark Tips for Business Owners© 2011 Fox Rothschild

×