This document summarizes key aspects of trademark law and registration. It defines trademarks as identifying the source of goods and distinguishes them from trade names, copyrights and patents. The advantages of registering a trademark are described as providing public notice, legal presumption of ownership nationwide and exclusivity. Infringement depends on the similarity of marks and relatedness of goods/services. The strength of a mark determines how much protection it receives, with fanciful/arbitrary marks receiving the most.

1. Safeguarding Your
Trademark
June 2015
Heather Bowen
Northwestern University School of Law

2. What are Trademarks?
 “A word, phrase, symbol, [slogan] and/or
design that identifies and distinguishes
the source of the goods of one party
from those of others.”

3. Trademarks v. Trade Names v.
Copyrights v. Patents
 Trademarks – identifies and
distinguishes goods and the source of
the goods; protects brand names and
logos
 Trade Names – identifies a business
or company
 Copyrights – protects original artistic
work or literary work
 Patents – protects inventions

4. Registering a Trademark
Advantages:
 1) Public Notice
 2) Legal Presumption Nationwide
 3) Exclusivity
Time frame – duration of its use

5. Trademark Infringement
 Likelihood of Confusion
 1) Marks of the parties are similar
 2) Goods and services are related in a way
that consumer may believe they come
from the same source

6.  IDENTICAL Marks + UNRELATED
goods and services = OKAY!
 Exception – famous mark

8. Possible Consequences
 Trademark
Rejection from
the USPTO
 Infringement
Lawsuit by the
other company

9. Strength of the Mark

10. Types of Trademarks
 “Generic”
 “Descriptive”
 “Suggestive”
 “Fanciful” /
“Arbitrary”

11. Generic Trademarks
 “Generic” – general / common words
that can’t be registered on their own

12. Descriptive Trademarks
 “Descriptive” – tells something a little
more about the goods and services

13. Suggestive Trademarks
 “Suggestive” – likely reference to a
product

14. Fanciful / Arbitrary Trademarks
 “Fanciful” / “Arbitrary” – functions as
inherently distinctive and as source
identifiers

15. Additional Factors to Consider
 Marketplace Function
 Pronunciation
 Spelling
 Consumer Communication

16. Questions & Answers