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