This webinar discusses trademarks, including what constitutes a trademark, the purpose of trademarks, and requirements for trademark protection and registration. It covers topics such as acquiring trademark rights through use of a mark in commerce, benefits of registering a trademark, defenses to trademark infringement, and what constitutes infringement. The webinar aims to explain these legal concepts around trademarks in plain English for non-lawyers. It is part of a series of webinars on intellectual property laws and how recent changes may impact businesses.

2. Practical and entertaining education for
attorneys, accountants, business owners and
executives, and investors.
2

3. The material in this webinar is for informational purposes only. It should not be considered
legal, financial or other professional advice. You should consult with an attorney or other
appropriate professional to determine what may be best for your individual needs. While
Financial Poise™ takes reasonable steps to ensure that information it publishes is accurate,
Financial Poise™ makes no guaranty in this regard.
While Financial Poise is happy to make this PowerPoint freely available to all, the reader is
cautioned that it was created for use as part of a webinar that featured an extensive verbal
discussion of the topics addressed in the PowerPoint. It was not designed to be read by
itself. Financial Poise webinars can be purchased at www.financialpoise.com You may also
receive offers for free webinars by subscribing to Financial Poise's DACyak, a free weekly
newsletter.
DISCLAIMER
3

4. MEET THE FACULTY
MODERATOR:
William C. Spence SpencePC
PANELISTS:
Kristin Garris Tannenbaum Helpern Syracuse
& Hirschtritt LL
Sherry Flax Saul Ewing Arnstein & Lehr LLP
Darren Spielman Kain Spielman, P.A.
4

5. ABOUT THIS WEBINAR
A trademark—whether a word, slogan, design, color, color combination, overall look or feel of an
item or its packaging, or even a sound —enables customers to identify the source of goods or
services. As such, companies should understand the benefits and pitfalls associated with U.S.
trademark laws if they ever hope to develop a successful brand.
This webinar discusses how trademarks are created and maintained, various methods of trademark
protection, rights conferred by trademark registration, and steps for enforcing trademarks in the
U.S. in the brick-and-mortar marketplace and online. This webinar is delivered in Plain English,
understandable to you even if you do not have a background in the subject. It brings you into an
engaging, even sometimes humorous, conversation designed to entertain as it teaches. And, it is
specifically designed to be viewed as a stand-alone webinar, meaning that you do not have to view
the other webinars in the series to get a lot out of it.
5

6. ABOUT THIS SERIES
Intellectual property (IP) laws in the US have undergone fundamental changes over the past several years. For example, in 2011, the
Leahy-Smith America Invents Act (AIA) overhauled the American patent system in a way that had not been accomplished since 1952.
Moreover, the Supreme Court decided several cases that, among other things, created a tougher environment for inventors/patent
applicants and expanded the scope of trademark protection to marks that were likely to be previously rejected. In 2016, The Defend
Trade Secrets Act created new federal laws that allow an owner of a trade secret to sue in federal court when its trade secrets have been
misappropriated. And new technologies, such as artificial intelligence, have scholars and legislators rethinking the scope of copyright
protection and debating additional reforms that have the potential for even more change.
In an increasingly competitive commercial environment, entrepreneurs and managers must understand how these changes to our patent,
trademark, trade secret, and copyright laws may potentially impact US businesses. This series of webinars seeks to both educate you on
current laws and prepare you to take full advantage of the changes that lie ahead. Please join some of the leading attorneys in the World,
as they discuss—in plain English for the non-expert—the basics of U.S. IP laws and the changing landscape as it affects US businesses.
As with every Financial Poise Webinar, each episode is delivered in Plain English understandable to investors, business owners, and
executives without much background in these areas, yet is also valuable to attorneys, accountants, and other seasoned professionals. And,
as with every Financial Poise Webinar, each episode brings you into engaging, sometimes humorous, conversations designed to entertain
as it teaches. Each episode in the series is designed to be viewed independently of the other episodes, so that participants will enhance
their knowledge of this area whether they attend one, some, or all episodes.
6

7. Dates shown are premiere dates; all episodes will be available on demand after
their premiere date.
EPISODES IN THIS SERIES
Episode#1 What Every Lawyer & Every Client Must Understand 2/7/2018
Episode#2 Nuts & Bolts of Patents 3/14/2018
Episode#3 Nuts & Bolts of Copyrights 4/11/2018
Episode#4 Nuts & Bolts of Trademarks 5/16/2018
Episode#5 Leveraging & Protecting Trade Secrets in the 21st Century 6/13/2018
7

8. Episode #4: Nuts & Bolts of Trademarks
© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™ 8

9. WHAT IS A TRADEMARK?
A trademark identifies the source of a good or service used in commerce.
• Names, brands, words, or phrases (e.g., APPLE®, Apple’s iPod, or
McDonald’s slogan I’m Lovin’ It)
• Symbols or shapes (e.g., Nike’s Swoosh or GEICO’s Gecko)
• Trade-dress or product, package, or store design (e.g., 7-Eleven store
design)
• Sounds, scents, or textures (e.g., NBC chimes or Aunt Annie’s scent)
People may use the term “service mark” to refer to a mark that identifies a
service and the term “trademark” to refer to a mark that identifies a good. We
use “trademark” in this presentation to refer to a mark that identifies either a
good or service.
© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™ 9

10. PURPOSE OF TRADEMARKS
• Trademarks promote a consumer’s ability to identify a business’s goods
or services.
• Trademarks protect a business’s goodwill, reputation, and brand
identity.
• Trademark law prohibits a person or business from using the same or a
confusingly similar mark, preventing consumer confusion.
© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™ 10

11. TRADEMARK REQUIREMENTS
A trademark must be used in commerce and be distinctive to receive
protection. A hierarchy of distinctiveness exists to determine the strength of
a mark.
• Fanciful (e.g., EXXON)
• Arbitrary (e.g., APPLE, WINDOWS)
• Suggestive (e.g., MICROSOFT)
• Descriptive (e.g., SHARP for TVs)
• Generic (e.g., ASPIRIN and CELLOPHANE)
© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™ 11

12. TRADEMARK REQUIREMENTS:
DISTINCTIVENESS CONTINUUM
At one extreme are marks that, when used in relation to the goods or
services are completely arbitrary or fanciful.
• Fanciful marks are words or terms that have been made-up or invented
for the sole purpose of functioning as a trademark. Such marks
comprise words that are either unknown (e.g., EXXON, KODAK,
PEPSI) or are completely out of common usage (e.g., FLIVVER).
© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™ 12

13. TRADEMARK REQUIREMENTS:
DISTINCTIVENESS CONTINUUM (con’t)
At one extreme are marks that, when used in relation to the goods or
services are completely arbitrary or fanciful.
• Arbitrary marks comprise words that are in common linguistic use but,
when used to identify particular goods or services, do not suggest or
describe a significant ingredient, quality, or characteristic of the goods or
services (e.g., APPLE for computers; OLD CROW for whiskey;
BUMBLE for a dating application).
© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™ 13

14. TRADEMARK REQUIREMENTS:
DISTINCTIVENESS CONTINUUM (con’t)
Next on the continuum are suggestive marks:
• Suggestive marks are those that, when applied to the goods or services at
issue, require imagination, thought, or perception to reach a conclusion
as to the nature of those goods or service.
• Suggestive marks, like fanciful and arbitrary marks, are registrable
without proof of secondary meaning. Secondary meaning is proof that a
mark has become distinctive as applied to the applicant’s goods or
services in commerce.
© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™ 14

15. TRADEMARK REQUIREMENTS:
DISTINCTIVENESS CONTINUUM (con’t)
Next on the continuum are merely descriptive marks:
• Marks are refused registration if the mark is merely descriptive. A mark
is merely descriptive if it describes an ingredient, quality, characteristic,
function, feature, purpose, or use of the specified goods or services.
(e.g., BED & BREAKFAST REGISTRY is merely descriptive of
lodging reservations services).
• The determination of whether a mark is merely descriptive must be
made in relation to the good or services for which registration is sought,
not in the abstract.
© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™ 15

16. TRADEMARK REQUIREMENTS:
DISTINCTIVENESS CONTINUUM (con’t)
Finally, generic terms for goods or services are at the opposite end of the
continuum from arbitrary or fanciful marks.
• Generic terms are terms that the purchasing public understands
primarily as the common or class name for the goods or services.
• Generic terms are incapable of functioning as registrable trademarks
denoting source, and are not registrable.
© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™ 16

17. TRADE DRESS
Trade dress includes the packaging, dressing, or design of a product.
Trade dress is typically defined as the total image and overall appearance of
a product, or the totality of the elements, including features such as size,
shape, color or color combinations, texture, and graphics.
Trade dress also includes the unique layout and design of retail stores and
restaurants (i.e. Apple retail stores, Taco Cabana Mexican restaurants)
© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™ 17

18. TRADE DRESS (con’t)
Trade Dress Functionality Doctrine:
• A feature that is essential to the use or purpose of the article or that
affects the cost or quality of the article is a functional feature, which
cannot serve as a trademark / trade dress.
• This doctrine is intended to encourage legitimate competition by
striking a balance between trademark law and patent law.
© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™ 18

19. LIMITATIONS ON TRADEMARKS
• First Sale Doctrine: A business may resell and distribute a trademarked
good without infringing because the article that bears a trademark does
not deceive consumers. However, the resold goods must not be
materially different from those purchased from the trademark owner.
• Acquiescence: An affirmative defense to trademark infringement. An
owner represents that a party can use the mark; the party relies on that
representation; and the party would suffer prejudice if it were not
permitted to use the mark.
© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™ 19

20. LIMITATIONS ON TRADEMARKS (con’t)
• Descriptive Fair Use: A good faith use by a party of a trademark to
describe its goods or services does not constitute infringement.
• Nominative Fair Use: A party’s use of a trademark to refer to a manner
that is not deceptive or likely to cause confusion.
© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™ 20

21. TRADEMARK OWNERSHIP AND
REGISTRATION
Trademark rights and ownership are acquired through actual use of the
mark in commerce. The first person to use the mark in commerce has
priority to use the mark.
Tacking Doctrine:
• An trademark owner that adopts a legally equivalent new mark that
is similar to its earlier mark such that consumers regard the two
marks as essentially the same. The owner may relate or tack the
date of its first use of the earlier mark to the new mark.
© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™ 21

22. TRADEMARK OWNERSHIP AND
REGISTRATION (con’t)
Registration of a trademark is not necessary, but registration provides
benefits to the owner.
• Nation-wide notice and constructive use. A registered mark is deemed
to have been in use throughout the United States as of the application
filing date such that it will have priority over a confusingly similar mark.
© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™ 22

23. TRADEMARK OWNERSHIP AND
REGISTRATION (con’t)
Benefits of registration (continued):
• Right to use the registered trademark symbol ®.
• Discourage others from using the trademark.
• Allows the U.S. government to block knock-offs and imports that
unlawfully use the mark.
• Provides benefits related to foreign registration.
© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™ 23

24. TRADEMARK OWNERSHIP AND
REGISTRATION (con’t)
Benefits of registration (continued):
• Validity of ownership, heightened protection after five years, and a
possibility of the mark becoming “incontestable.”
• Right to obtain enhanced damages and attorneys’ fees in some cases.
• Provides the ability to obtain statutory damages in counterfeiting cases.
© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™ 24

25. TRADEMARK INFRINGEMENT
The Lanham Act governs actions related to trademarks.
Trademark infringement occurs when a party uses a mark, without
authorization, in connection with goods or services that is likely to cause
confusion, deception, or mistake about the source of the goods or services.
The determination of a likelihood of confusion is dependent on a number
of factors (e.g., the strength of the mark, the proximity of the products, the
degree of similarity between the marks, the quality of the defendant’s
product, and the sophistication of the buyers).
© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™ 25

26. ABOUT THE FACULTY
WILLIAM C. SPENCE
william.spence@spencepc.com
William Cory Spence assists individual and business clients to obtain their best possible outcome in contentious legal matters. He has
extensive experience in litigation, arbitration, and mediation involving all areas of intellectual property law. A registered patent attorney,
Mr. Spence serves clients by providing advocacy and advice in the areas of: patent infringement; trade secret misappropriation; unfair
competition (including conspiracy, tortious interference, and related antitrust claims); breach of contract; post-grant patent proceedings
(e.g., inter partes review) ; trademark infringement; and copyright infringement.
He has litigated claims in both state and federal courts throughout the United States. Additionally, Mr. Spence has extensive experience
with patent monetization strategies and complex, international patent infringement litigation involving multiple parties and jurisdictions,
most notably including Japan. He is a published author and frequent speaker on patent monetization and other intellectual property
issues, and has been repeatedly recognized as an “Illinois Rising Star” and “Illinois Star,” in the area of intellectual property.
Mr. Spence is a graduate of the University of Notre Dame, where he obtained separate Bachelor of Science Degrees in Chemical
Engineering and Biophysics (“Physics in Medicine”). As a student he received the distinction of Notre Dame Scholar and also earned the
Monogram Award. Upon graduation from Notre Dame, Mr. Spence received his commission as a Second Lieutenant in the United
States Air Force, Medical Service Corps. After completing his military service, he worked for several years in the chemical industry before
pursuing his legal education at the University of Houston Law Center. Prior to forming SpencePC, Mr. Spence spent twelve years
practicing law with Kirkland & Ellis LLP in Chicago, IL and Tokyo, Japan.
26© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™

27. ABOUT THE FACULTY
SHERRY FLAX
Sherry.Flax@saul.com
Sherry’s practice concentrates on matters dealing with intellectual property law, with an emphasis on trademarks and copyrights. She
assists clients in all aspects of securing and protecting their rights in commercially valuable property through U.S. and international
trademarks and copyrights, domain names, trade secrets, and licensing. She regularly counsels clients on the use and protection of
intellectual property on the Internet and related aspects of business law. She has extensive experience in working with both mature and
emerging companies on developing and strengthening brands in a wide variety of industries.
Sherry has more than 20 years of experience in complex civil litigation, including litigating patent, trademark and trade dress
infringement, unfair competition, and domain name cases and disputes. She regularly advises clients on litigation strategy and protective
measures. Her trademark litigation matters have included infringement cases in the federal courts as well as opposition, cancellation, and
concurrent use administrative proceedings before the Trademark Trial and Appeal Board. Sherry regularly lectures at seminars and
other forums on trademark and copyright law and has published several articles on these topics.
Sherry received her B.S. from the University of Maryland and her M.S. from the Johns Hopkins University. Thereafter, she attend the
University of Baltimore School of Law where she graduated cum laude.
© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™ 27

28. ABOUT THE FACULTY
Kristin Garris, Counsel at Tannenbaum Helpern Syracuse & Hirschtritt LLP in New York, focuses on trademark and copyright litigation,
enforcement, and counseling; transactional IP matters for a wide range of clients; Internet, social media, data privacy, and cybersecurity issues; and
the licensing of IP rights. She has significant experience with trademark proceedings before the Trademark Trial and Appeal Board of the U.S.
Patent and Trademark Office and has helped clients resolve intellectual property matters in federal court proceedings, in arbitration, and through
creative and practical settlements outside the courtroom. A skilled negotiator, Kristin has negotiated and drafted license agreements and IP
provisions in asset purchase agreements, employment agreements, and other commercial contracts, and has helped guide clients successfully
through complex trademark, copyright, and Internet disputes. She has conducted IP due diligence on trademark, copyright, and domain name
issues in mergers and acquisitions.
Kristin has years of experience in creating and managing tailored, comprehensive trademark and copyright Internet policing and enforcement
programs for clients. She regularly advises clients on the clearance of trademarks, registration procedures and strategies, and brand
management. Examples of Kristin’s recent speaking engagements include “IP for Artists,” “IP for Small Business Owners,” “ICANN: New
Developments To Keep An Eye On,” and “IP for Designers/Product Vendors.” Kristin received her undergraduate degree from Davidson College,
an M.A. from the University of Virginia, and her law degree from Wake Forest University School of Law.
28© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™
KRISTIN GARRIS
garris@thsh.com

29. ABOUT THE FACULTY
DARREN SPIELMAN
dspielman@complexip.com
Darren Spielman is a Shareholder of Kain Spielman, P.A. He concentrates his practice in the field of intellectual
property, with an emphasis on trademarks, trade secrets, domain name disputes, copyrights, libel and defamation. Darren
has a Bachelor of Science in Public Relations from University of Florida. He also earned a Masters in Mass
Communications degree from the University of Florida, as part of a joint degree with the University of Florida Levin
College of Law. Darren also completed the Intellectual Property Certificate Program during law school. Darren is
admitted to practice in front of the U.S. District Court for the Northern District of Florida, Southern District of Florida,
and Middle District of Florida and the Eleventh Circuit Court of Appeals. Darren is a member of the Intellectual
Property Committee and the Computer Law and Technology Committee of the Business Law Section of the Florida Bar.
Darren has been honored with: the Super Lawyers Rising Stars Award for 2009, 2010 2011, 2013-2017; Top Attorneys
Florida Outstanding Young Lawyers Award for 2011, 2013-2017; and America’s Most Honored Professionals Top 1% in
2016 and 2017. He is also a frequent presenter and public speaker on IP and First Amendment topics.
© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™ 29

30. The material in this presentation is for general educational purposes only. It has been
prepared primarily for attorneys and accountants for use in the pursuit of their
continuing legal education and continuing professional education.
While Financial Poise is happy to make this PowerPoint freely available to all, the
reader is cautioned that it was created for use as part of a webinar that featured an
extensive verbal discussion of the topics addressed in the PowerPoint. It was not
designed to be read by itself. Financial Poise webinars can be purchased
at www.financialpoise.com. You may also receive offers for free webinars by
subscribing to Financial Poise's DACyak, a free weekly newsletter.
IMPORTANT NOTES
30© 2018 by DailyDAC, LLC d/b/a Financial Poise Webinars™

31. If you have any questions about this webinar that you did
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