Dan Wheeler's Trademark presentation.

1. Intellectual Property

2. iSoda
Taylor Stitch
Furlined
iMilk
Geezeit
iMilk GGX Global
Green Exchange
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3. Doing it wrong is very expensive!
Failure to do a trademark search is
evidence of bad faith and can result
in:
–turnover of all profits
–attorneys’ fees (theirs AND yours)
–punitive damages and penalties
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4. Building a brand based on defensible IP is
extremely valuable.
– A recognizable brand typically increases a
company’s value by over 100%!
– Example: Coca-Cola brand is worth $39
billion.
– Warren Buffet buys companies based on brand
strength.
– Allows for licensing revenue and other residuals.
– Lucrative damage claims against infringers.
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5. Best Referrals:
– People starting a company based on ideas or
brands
– iPhone application developers
– web-based businesses
– inventors
– Anyone who has been infringed, plagiarized,
copied, etc.
– In particular, start-ups who have both technology
and a need for capital
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6. Why me?
– Individuals and start-ups desperately need:
–sophisticated advice
–an affordable budget
– I have years of experience in helping
clients decide what they really need and
what budget works for them.
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7. Arbitrary or Fanciful Marks
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8. Descriptive Marks – Must have
secondary meaning, which can be
acquired over 5 years.
Phonetic Spellings
Fatless Fry
Oven Fresh Foreign Language Words
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9. Suggestive Marks – No secondary
meaning requirement.
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10. Generic Marks –
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11. Trade Dress – Overall appearance of a product.
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12. Copyrights
Forms of expression protected, not
ideas, method, concept or
principle. Not facts or information
(telephone book listings).
Live music performances protected,
but otherwise, must be in fixed
form.
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13. Protected – Books, music, sound
recordings, photographs, sculptures,
architecture, computer programs.
Copyright covers derivative works and
rights of performance. Last for lifetime
plus 70 years.
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14. Damages for infringement include
actual and statutory damages and
attorney’s fees if registered within 3
months.
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15. Trade Secrets
Information that is
(1) not generally known,
(2) valuable, and
(3) maintained with secrecy.
Can protect secrets forever.
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16. Patents
Utility patent – 20 year monopoly for
(1) original,
(2) useful, and
(3) non-obvious applications.
E=mc2 is just an idea, a theory and is
not subject to patent.
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17. Design patents – 14 year monopoly for
new, original and ornamental designs
for articles of manufacture. Need not
be useful. Similar in some ways to
copyright, but patents prevent reverse
engineering. Example: Coca Cola
bottle (also a protected trademark).
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18. Start at about $10,000 and average
3 years to prosecute.
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19. Trademark Requirements
• More than token use in a commercial
context.
• Physically associated with the good or on
docs physically associated with sale.
• Not confusingly similar to existing mark.
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20. Trade names – important to distinguish
Service Mark – ok if mark used on
advertising or promotional materials
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21. If your website functions only to
advertise your own business
(www.buchalter.com), then it is not a
service mark, it is just an address on
the internet.
To trademark a last name (Wheeler’s
Law Services), must have proof of
distinctiveness.
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