Basics of trademarks presented at the Buckeye Public Library February 13, 2017

1. TRADEMARK BASICS
Coyote Branch
February 13, 2017
Peter Grant, State Library of Arizona
A division of the Secretary of State

2. Can You Name That Trademark?

3. Can You Name That Trademark?
KFC
Serial # 72209176

4. Can You Name That Trademark?

5. Can You Name That Trademark?
NBC
Serial #74576101

6. Can You Name That Trademark?

7. Can You Name That Trademark?
Allstate
Serial # 78308365

8. Trademark Basics
• What is a Patent and Trademark Resource Center?
• Types of Intellectual Property
• What is a Trademark?
• Choosing a Trademark
• State Trademarks
• Federal Trademarks
• USPTO Tools
• Sources for Assistance
• Tips for Working with an Attorney

9. What is a Patent and Trademark Resource Center (PTRC)?
• A library selected by the US Patent and Trademark Office (USPTO) to
provide patent and trademark materials to the public
• PTRC librarians are trained by the USPTO to help patrons with
intellectual property questions
• PTRCs have core collections of related resources and are part of a
network of 85 libraries

10. Types of Intellectual Property
• Patents
• Copyrights
• Trade Secrets
• Trademarks

11. PATENTS

12. Patents
• The grant of a property right to the inventor, issued by the
United States Patent and Trademark Office.
• A patent obtained in the U.S. gives the patent holder the right,
for a limited time, to exclude others from making, using,
offering to sell, selling, or importing into the U.S. the subject
matter that is within the scope of protection granted by the
patent.
• U.S. Constitution: Article 1, Section 8, Clause 8
“To promote the Progress of Science and useful Arts, by securing for
limited Times to Authors and Inventors the exclusive Right to their
respective Writings and Discoveries.”

13. Patents
What can be patented?
• “…any new and useful
process, machine, article
of manufacture, or
composition of matter, or
any new and useful
improvement thereof…”

14. Patents
Utility Design Plant
Term: 20 years Term: 15 years Term 20 years

15. COPYRIGHTS

16. Copyrights
• “Copyright is a form of protection provided to the authors
of "original works of authorship" including literary,
dramatic, musical, artistic, and certain other intellectual
works, both published and unpublished.”
• “The copyright protects the form of expression rather than
the subject matter of the writing.”
• U.S. Constitution: Article 1, Section 8, Clause 8
“To promote the Progress of Science and useful Arts, by securing for
limited Times to Authors and Inventors the exclusive Right to their
respective Writings and Discoveries.”

17. Copyrights
What can be copyrighted?
• "original works of
authorship" including
literary, dramatic, musical,
artistic, and certain other
intellectual works, both
published and
unpublished.”

18. Copyrights
Individual or Known Author
• Author’s Life +70 years
Work for Hire or Pseudonymous
• 95 years from first
publication or 120 years
from creation, whichever
is shorter
For works created pre 1978, see Copyright Office publication: http://www.copyright.gov/circs/circ15a.pdf

19. TRADE SECRETS

20. Trade Secrets
• “all forms and types of financial, business, scientific, technical, economic,
or engineering information, including patterns, plans, compilations,
program devices, formulas, designs, prototypes, methods, techniques,
processes, procedures, programs, or codes, whether tangible or
intangible, and whether or how stored, compiled, or memorialized
physically, electronically, graphically, photographically, or in writing if—
• (A) the owner thereof has taken reasonable measures to keep such
information secret; and
• (B) the information derives independent economic value, actual or
potential, from not being generally known to, and not being readily
ascertainable through proper means by, the another person who can
obtain economic value from the disclosure or use of the information.”
• Defend Trade Secrets Act of 2016

21. Trade Secrets

22. TRADEMARKS

23. What is a Trademark?
• A trademark is a word, name, symbol, or device that is
used in trade with goods to indicate the source of the
goods and to distinguish them from the goods of others.
• Lanham Act (Trademark Act of 1946). Passed by Congress on
July 5, 1946.Took effect July 5, 1947

24. What is a Trademark?
Trademark/name
Servicemark/name

25. What is a Trademark? “The color(s) green and
yellow is/are claimed as a
feature of the mark. The mark
consists of the color
combination green and
yellow in which green is
applied to an exterior surface
of the machine and a yellow
stripe is applied to a portion
of the exterior surface. When
viewed from a distance, the
stripe appears solid yellow.
The broken-line outlining is to
show the position or
placement of the mark on the
goods. The outlining and the
shape of the machine are not
claimed as part of the mark.”Reg # 4277914
Reg # 3854018

26. What is a Trademark?

27. What is NOT a Trademark?
Domain Name
• Human friendly form of
internet address
• Used to locate websites
• Can infringe on another’s
trademark
• Regulated by ICANN
(Internet Corporation for
Assigned Names and
Numbers)
www.hollister.com
www.hollisterco.com

28. What is NOT a Trademark?
Geographical Indication
• “…is a sign used on
products that have a specific
geographical origin and
possess qualities or a
reputation that are due to
that origin.”
• World Intellectual Property
Office (WIPO)
Champagne

29. CHOOSING A TRADEMARK
Some are stronger than others

30. Strengths of Trademarks
• Descriptive
• Suggestive
• Arbitrary
• Fanciful

31. Descriptive Marks
• Describes some characteristic of the product – marks
deemed “merely” descriptive may not be registerable
unless they acquire distinctiveness
Skinner Mfg. Co. v. Kellog Mfg. Sales Co.
et al., 62 USPQ 234 (8th Cir. 1944)
Disclaimer: NO CLAIM IS MADE
TO THE EXCLUSIVE RIGHT TO
USE "RAISIN BRAN" APART
FROM THE MARK AS SHOWN
Loctite Corp. v. Nat’l Starch and
Chem. Corp.,
516 F. Supp. 190 (S.D.N.Y. 1981)

32. Suggestive Marks
• Imply a characteristic of the product

33. Arbitrary Marks
• Actual words whose meaning has no relation to the goods
protected

34. Fanciful Marks
• Invented words with no dictionary definition

35. Trademark Basics
• What is a Patent and Trademark Resource Center?
• Types of Intellectual Property
• What is a Trademark?
• Choosing a Trademark
• State Trademarks
• Federal Trademarks
• USPTO Tools
• Sources for Assistance
• Tips for Working with an Attorney

36. TRADEMARK
REGISTRATION
State or Federal?

37. State Trademark Registration
• Not legally required, but is an accepted practice
• Filed in the Office of the Secretary of State

38. State Trademark Registration
• Secretary of State’s Office will register a trade name and/or
trademark/servicemark with the state.
• Exclusive right to use the mark in the State of Arizona
• Tradename registrations are good for 5 years, trademark
registrations are good for 10 years (both can be renewed
indefinitely)
• May collect damages up to MSRP or $500 for each item,
whichever is greater
• Learn more about the requirements for registering a mark at
www.azsos.gov under “Business”.

39. State Trademark Search
• Search for the root of a word
• Take off all plural references
• "Made-up" names should be
used in connection with the
nature of business

40. State Trademark Fees
• Tradename: $10
• Trademark: $15
• Renewals
• Tradename $10 every 5 years
• Trademark $15 every 10 years
• File renewal 6 months before expiration date

41. Federal Trademark Registration

42. Federal Trademark Registration
• Legal presumption that the person owns the mark
• Exclusive right to use the mark nationwide (with specific
types of goods/services that you registered)
• The right to use the ® for federal marks
• The ability to sue for infringement in federal court
• “three times such profits or damages, whichever amount is greater,
together with a reasonable attorney's fee” (15 U.S.C. 1117
(SECTION 35 OF THE LANHAM ACT))
• Must file declaration of use between 5th & 6th and 9th &
10th years, every ten years thereafter ($300/class)

43. Federal Registration
TEAS TEAS RF TEAS+ Paper Renewal
$400 $275 $225 $600 $300/$500*
File
electronically
Agree to e-mail
communication,
electronic
submission of
additional
documents
TEAS RF
requirements, plus
use description of
goods and
services from ID
manual; Pay
upfront; provide
certain statements
*Paper
renewal
All prices per class of goods/services
Prices in RED effective January 14, 2017
https://www.uspto.gov/trademarks-application-process/filing-online

44. Federal Registration
Is it Registerable?
• Merely a surname
• Merely descriptive
• Primarily geographically
(mis)descriptive
• Vulgar or disparaging
• Confusingly similar to an
existing registration
Is it Enforceable?
• Descriptive
• Suggestive
• Arbitrary
• Fanciful

45. Federal Registration
Merely a Surname
• Section 2(e)(4)
• Mark is primarily a “last
name”
• Consider the primary
significance to the
purchasing public
• What is the dominant
commercial impression of
the mark as a whole?
Merely Descriptive
• Section 2(e)(1)
• Issued when the
trademark immediately
describes a significant
aspect of the goods
• Purpose, function, use
• Characteristic, ingredient
• Quality or feature

46. Federal Registration
Geographically Descriptive
• Section 2(e)(2) and 2(e)(3)
• Issued if “primary
significance” of the mark is
geographic and the public
would likely believe the
goods or services originate
in the place identified in the
mark
Vulgar or Disparaging
• 15 U.S. Code § 1052
• Immoral, deceptive or
scandalous matter
• Falsely suggest a
connection with person
living or dead, institutions,
beliefs or national symbols
or brings them into contempt
or disrepute

47. Federal Registration
Supplemental Registration Does
• Allows for the registration of
marks which are CAPABLE of
indicating source
• Protects mark under section 2(d)
• Grants use of the registration
symbol
• Permits registrant to file suit in
federal court
• Provides basis for registration on
foreign countries
Supplemental Registration Does Not
• Does not provide
presumption of ownership
• Does not support later claim
of incontestability
• Does not give the exclusive
right to use the mark
• Cannot request exclusion of
imports by the Bureau of
Customs

48. Federal Registration
Acquired Distinctiveness
• Registration based on use and
public recognition of mark as
indicator of source
• Can be claimed through:
• 5 years of substantially exclusive
and continuous use in commerce
• Ownership of same mark on
Principal Register for related
goods or services
• Submission of evidence such as
sales figures, advertising, and/or
surveys

49. Federal Registration
Likelihood of Confusion
• Consider the commercial
impression of the mark
• Would the consumer
mistakenly believe that
the goods or services
came from the same
source
Two Part Test
• SAM
• SUM

50. Federal Registration
• Sound, Appearance and Meaning (SAM)
• Fashion Fun vs. Fashun Fun
• Lutex vs. Lutexal
• Watercare vs. Aquacare
• Capitol Builders vs. Capital Builders

51. Federal Registration
• Similar in Nature, Use, and Marketing
• Goods likely to be marketed, sold or used together
• Purses and luggage
• Crutches and wheelchairs
• Peanut butter and jelly

52. Federal Registration
• Similar in nature, use, and marketing
Chevrolet Bolt Star Bolt (Yamaha)
“Both the applicant’s goods and the registrant’s goods are passenger vehicles moved by internal-
combustion engines. As such, the marks for the goods would be used in the same manner, with closely
related goods and in closely related channels of trade.”- Initial rejection, 86357513

53. USPTO TOOLS

54. USPTO Tools
• Trademark Electronic Search System (TESS)
• Acceptable Identification of Goods and Services Manual
(ID Manual) Next Generation
• Design Code Search Manual
• Trademark Electronic Application System (TEAS)
• Trademark Status and Document Retrieval (TSDR)

55. Trademark Electronic Search System
• Contains records of active and
inactive trademark registrations
and applications
• Can search text and images of
marks
• Offers basic, structured or free
form search
• Free form search page offers
explanations and examples

56. Acceptable Identification of Goods and
Services Manual (ID Manual) Next
Generation
• Federal trademarks are registered based upon the class
of goods or services being declared
• Manual lists 45 classes of goods and services

57. Design Code Search Manual
• Trademark designs are searched by codes assigned to
describe elements of the mark
• Searchable by keyword
• Contains alphabetical index
01.01.01
Stars with three points
01.01.02
A single star with four points
02.01.31
Stylized men, including men depicted in
caricature form

58. Trademark Status and Document
Retrieval (TSDR)
• View all data and documents
about a trademark
• Download all data and
documents
• Bookmark TSDR URLs for
future searches
• Simultaneously request and
review multiple cases

59. Trademark Electronic Application System
• https://www.uspto.gov/trademarks-getting-
started/trademark-basics/teas-nuts-and-bolts-videos

60. Trademark Electronic Application System

61. Sources for Assistance
• Trademark Information Network (TMIN)
• https://www.uspto.gov/trademarks-getting-started/process-
overview/trademark-information-network
• Video series online
• Enhanced Accessibility Versions
• Printable Transcripts
• Basic Facts videos available with Spanish subtitles

62. Sources for Assistance
• Trademark Assistance Center
• TrademarkAssistanceCenter@uspto.gov
• Toll-Free: 800-786-9199
• Monday through Friday 8:30 a.m. to 8 p.m. ET (telephone)
• General questions about the registration process
• Inquiries about the status of applications and registrations

63. Tips for Working with an Attorney
• How many trademarks have you
prosecuted?
• What are the estimated costs?
• How will you keep me informed?
• Do you have references?

64. Thank You!