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Iact tjm presentation 7-26-16
- 1. IACT Program July 26, 2016 • Trademark Protection What you should know about trademark protection for your new product/service. • Presented by Terrence J. McAllister, Partner at Ohlandt, Greeley, Ruggiero & Perle, LLP
- 2. Program Outline Intellectual Property laws including trademark laws can be used to protect valuable business assets but they can also be used to significantly impact on a business’s success. Trademark selection, clearance and protection is our focus. We can look at how to minimize liabilities/loss of rights. We can look at steps to establish and protect a valuable trademark asset. - Selection of protectable names - Filings - Policing
- 3. Why is there Interest in Trademarks. • Business advantages for exclusive use in a particular market for products/services. • Higher value by investors, venture capitalists, bankers. • They represent the essence of the business’s goodwill and product quality. • They can be licensed to create a source of income.
- 4. What is a Trademark. • A name, term, slogan, symbol, sound, color, letters or numbers adopted and used by a party that serves to identify it’s products/services and distinguish them from those of others. • The trademark can signify the source of the products/services and serve as an indicator of the quality of the products/services.
- 5. Examples of Trademarks. • Word • Symbol • Slogan • Product or Packaging Design JUST DO IT.
- 6. Where these issues come up in everyday business. Naming a new business Naming new products/services Development of product packaging Development of logos Advertising, Marketing and Social Media
- 7. Selecting protectable trademarks. • Generic terms- no protection- smart phone • Descriptive terms- need to show acquired distinctiveness or Secondary Meaning- VitaminWater® • Suggestive terms- CitiBank® • Distinctive terms- The best trademarks include uses in a new context, Apple® and coined terms, Google®
- 8. You be the “Judge” HOME BREWING CO. YOUR BEER. YOUR TAP. YOU'RE HOME. HOMEPLACE BEER COMPANY BREWED IN BEER'S HOMETOWN
- 9. Trademark Clearance Most decisions are driven on some level by evaluation of risks, and the effort to minimize risk in most cases. The key issue in trademark law is whether “customer/consumer confusion” will arise based on the use of the proposed name/trademark. May need to consider securing an opinion or strategic advice on whether a new business name/logo will infringe upon an existing right. Look at clearance searches and related efforts to seek to minimize risks as you enter the marketplace. ( US PTO, Internet search engines, Google and the like) Can a full search impact on issues of good faith/bad faith intent in an infringement context?
- 10. What are the Risks. Trademark Infringement Remedies -After successfully proving trademark infringement, a plaintiff is entitled to differing remedies based on certain situations. -Generally, the most common award is an injunction against the infringing trademark so it may not further damage the original trademark. -In certain cases, monetary relief may be awarded, potentially encompassing the following elements: Defendant’s profits, damages sustained by the plaintiff, and the costs of litigating. Treble damages may be awarded in cases where such gross negligence was used by the defendant that willful infringement was committed.
- 11. What Steps should you be taking to protect your trademarks. • Filings in the US and overseas • Domain name registrations • Customs filings after registration • Watching services for trademarks and domain names • Cease and desist letters • US Trademark Office oppositions and cancellation actions • Federal Court infringement proceedings • Administrative proceedings for Domain Names- UDRP at WIPO
- 12. Questions and comments- Thank you.