Morris Turek explains what trademarks are, how to search for them and the pitfalls of doing it yourself.

1. Trademarks for the Small Business Owner
What You Need to Know to Protect Your
Brands and Avoid Infringement Lawsuits

2. Every Business Has a Trademark!
• Embody Qualities and Characteristics of Products/Services
• Consumers Use Trademarks to Identify, Compare, and Distinguish
Products/Services
• Trademarks Offer Consumers Assurance of Quality and Consistency
(whether good or bad)
• MOST VALUABLE ASSETS – Embody Goodwill and Reputation of the
Business

3. Forming a Corporation or LLC Does Not
Protect the Name of the Business!
• Forming a Corporation or LLC Provides Limited Liability
• Some Companies Use Their Corporate Names as a Trademark (e.g.
McDonald’s and Dell).
• But Some Don’t (e.g. Doctor’s Associates, Inc.)
• Fictitious Name Registrations ≠ Trademark Protection

4. What is a Trademark?
• Names
• Logos
• Slogans
• Taglines
• Characters
• Symbols
• Colors
• Sounds
Used to Identify and Distinguish Products/Services and to Indicate the Source
of Products/Services

5. Examples of Famous Trademarks

6. How Do You Acquire Trademark Rights?
• Just Use It!
• Acquire “Common Law” Rights Where Trademark is Used
• Trademark Rights Can Last Forever
• Federal Registration with the United States Patent and Trademark Office
Acknowledges and Enhances Prior-Acquired Rights

7. How Strong is Your Trademark?
• Trademarks are Categorized By Their Strength
• Stronger Trademarks = Broader Protection
• Categories of Trademarks:
 Generic
 Descriptive (BANK OF AMERICA, SPORTS ILLUSTRATED)
 Suggestive (JAGUAR, GREYHOUND, COPPERTONE)
 Coined and Arbitrary

8. Why Perform a Trademark Search?
• Because You Don’t Want to Be a Dirty Little Infringer
• Because You Don’t Want to Be Sued for Trademark Infringement
• Because You Don’t Want to Risk Losing the Goodwill and Reputation
Associated with Your Trademarks
• Because You Want to Know if Your Trademark is Eligible for Federal
Registration

9. Types of Trademark Searches
• Common Law Trademark Search
 Reveals Trademarks Being Used But Not Registered
• State Trademark Search
 Reveals Trademarks Registered at the State Level
• Federal Trademark Search
 Reveals Trademarks Registered with the United States Patent and
Trademark Office
 Recommended for ALL Businesses

10. The Federal Trademark Search
• Conduct “Knockout” Search Yourself at (www.uspto.gov)
 This is NOT a Comprehensive Search!
 Obvious Conflict = Use at Your Own Risk
 No Obvious Conflicts = Hire a Trademark Attorney to Conduct a
Comprehensive Federal Search and Issue Legal Opinion
 Positive Search Results = Seek Registration of Trademark

11. Why Should You Register Your Trademark?
• Obtain Exclusive Rights to Use Trademark Nationwide
• Prevents Registration of Confusingly Similar Trademarks
• Advantages in Trademark Infringement Litigation
• Puts World on Constructive Notice of Your Trademark Rights
• Can Prevent Importation of Infringing Products
• Easier to Obtain Trademark Protection in Foreign Countries
• Obtain Cancellation of Infringing Domain Names
• Ability to use the ®

12. Overview of Trademark Registration Process
• File Trademark Application (www.uspto.gov/trademarks/teas/index.jsp)
 In Use or Intent-to-Use
• Trademark Examining Attorney Will Review Application in 3-4 Months
 Approve for Publication
 Refuse Registration and Issue an “Office Action” – Response Due Within 6 Months
• Trademark Application is Published for Opposition
 No Opposition and In Use Trademark Application = Certificate of Registration (Rock On!!)
 No Opposition and Intent-to-Use Trademark Application = Notice of Allowance
 Opposition Filed = Need to Be Resolved Before Certificate of Registration or Notice of Allowance is Issued
• Prepare and File Statement of Use (Intent-to-Use Application Only)
 Maximum of 36 Months (3 Years) from Notice of Allowance Date
 Must File Extension of Time Every Six Months to Keep Application Alive
 File Statement of Use = Obtain Certificate of Registration (Rock On!!)
• Renewal of Trademark Registration
 Between the 5th and 6th Year of Registration
 Between the 9th and 10th Year of Registration
 Every Subsequent 10 Years

13. Protecting Your Brands Online
• Purchase Domain Names That Incorporate Your Primary Trademark(s)
 (e.g. trademark.com, trademark.org, trademark.net, trademark.xxx)
• Conduct a Google Search Every Few Months
• Perform a Federal Trademark Search (www.uspto.gov) Every Few Months
• Reserve Usernames on Twitter, Facebook, and YouTube that Incorporate
Your Primary Trademark(s)
• Consider Hiring a Trademark Monitoring Company

14. What You Should NOT Do
• Purchase Domain Names That Incorporate Your Competitors’ Trademarks
• Adopt, Use, or Attempt to Register Your Competitors’ Trademarks
• Adopt Clipart as a Trademark
• Attempt to Create a False Association or Affiliation with Another Business
• Delay Protecting and Registering Your Most Valuable Trademarks
• Adopt a Trademark Without Clearing It First
• Send Cease and Desist Notices Without Knowing All the Facts
• Present False or Misleading Information in Your Trademark Application (purposely or
accidentally)
• Ignore or Take Lightly Allegations of Trademark Infringement

15. THANK YOU!