This document provides an overview of trademarks, including what constitutes a trademark, the different types of trademarks, selecting and registering a trademark, developing a brand, and resolving trademark conflicts. Key points include: trademarks identify the source of goods/services and distinguish them from others; the strength of a trademark impacts the scope of protection; selecting a unique, arbitrary or fanciful mark reduces the likelihood of confusion; developing proper trademark usage guidelines and consistently enforcing use strengthens a brand; registration provides ownership rights but use in commerce also builds rights.

1. Trademarks: A Primer
Presenters:
Karen Tyler and Justin McCabe, Partners at
Dunkiel Saunders Elliott Raubvogel & Hand, PLLC

2. Trademarks
• Purposes and Types
• Conflicts and Issues
• Selecting a Mark
• Developing a Brand
• Registration Process

3. What is a Trademark?
• Definition of Trademark:
– Any word, name, symbol, or device, or any combination thereof:
• Defines the source of goods/services;
• Distinguishes the goods/services from those of others; and
• Stands for the goodwill associated with a product/service.

4. Policy
• Benefits of Trademarks:
– Early thoughts:
• Advertising protection
• Use to prove manufacturer; ownership resolution
• Guarantee of quality (or not)
– Modern
• Reduce information and transaction costs by allowing customers to estimate
the nature and quality of goods before purchase

5. What can be a TradeMark?
• Made up words (XEROX)
• Common words (APPLE)
• Alphanumeric combinations (V-8)
• Logos
• Packages or labels (think Campbell's soup can)
• Colors
• Product shapes (Coca-Cola bottle)

6. What cannot be a Trademark?
• Generic or merely descriptive words or symbols
• E.g.,
– Tissue for tissues
– Computer for computers
For pies

7. Types of Trademarks
• 5 Categories (from strongest to least strong)
– Fanciful
• XEROX, GOOGLE, EXXON
– Arbitrary
• APPLE for computers
• FORD, SEQUOIA, TUNDRA for automobiles
• CAMEL FOR CIGARETTES

8. Types of TM’s Cont.
– Suggestive
• MICROSOFT
• COPPERTONE
• LAND ROVER
• TICKETMASTER
• PURELY SOFT
– Somewhat Descriptive
• TRAILER SUPPLY
• STAPLES
• TTABLOG
– Generic – car, computer, aspirin, etc.

9. Trademark Type v. Strength
Inherently Distinctive
Generic Descriptive Suggestive Arbitrary Fanciful
No Protection Strong Protection

10. Why is Strength Important?
• Strength of mark defines scope of protection
– Inherently distinctive marks are given broader scope than other
marks
• Example:
– If someone tried to register APLE for consulting services, APPLE for computers would
have a strong case
– If someone tried to register APLE for pies and the existing mark was APPLE for bakeries,
may have weak case
• Descriptive marks may not be registrable and may be more
likely to have a crowded field:
• E.g., TRACTOR SUPPLY coexists with TEXAS TRAILER SUPPLY, etc.

11. Conflicts and Issues
• Trademarks (in the U.S.) are established by using the mark in
commerce
– It is possible to register your mark before using it
• Issues arise when:
– You want to register a mark that is similar to an already registered
mark or a mark that is already in use for similar goods/services
– You begin using a mark that is already in use or has been registered
• Using a mark that is already registered or in use can cost a lot
of $$$ to fix…

12. Allagash v. Pelletier
• What’s the situation?
– ALLAGASH WILD proposed for registration
– ALLAGASH (the beer company) opposed based upon their
registration
• Rule
– “[a]lthough confusion, mistake or deception about source or origin is
the usual issue posed under Section 2(d), any confusion made likely
by a junior user’s mark is cause for refusal; likelihood of confusion
encompasses confusion of sponsorship, affiliation or connection.”

13. Allagash v. Pelletier
• Analysis – Similarity of Marks
– Mark evaluated in entireties
– Focus is primarily on ALLAGASH despite existence of WILD in
Applicant’s mark.
• Wild is descriptive, not sufficient to distinguish marks on its own
– Chose marks with a distinctive feature if a part of mark is similar
• Marks are found similar in appearance, sound, meaning, and
overall commercial impression
– Note that this is done in a vacuum

14. Allagash v. Pelletier
• Analysis – Strength
– No other users in food field
• Allagash (beer) has developed significant following
– Same channels
• Doctrine of Natural Expansion
• Are the goods related?
– Other registrations for beer, jam, and jellies
– Beer and food go together
– No limitations in Applicant’s application as to channels of trade – therefore all usual trade
channels presumed
– Applicant admission: “I assume I first saw Allagash Beer in a Fort Kent, Maine grocery store
since the name would most likely catch my attention.”

15. Likelihood of Confusion
• Many factors:
– Strength of mark
– Proximity of goods
– Similarity of the mark
• Sight, sound, meaning
– Evidence of actual confusion
– Channels of trade
– Degree of care of purchaser
– D’s intent in selecting mark

16. Options
• If using similar mark to another, be sure to include a distinctive
feature along with it
– May not be enough, but you’ll have an argument
• Two Primary Rules
– More similar the mark, less similar the goods and services need to be
– More similar the goods and/or services, less similar the mark needs
to be

17. Selecting a Mark
• Research before committing!
– USPTO and web
– Compare similarity of mark and similarity of goods/services offered
• Remember that the more unique your mark is (e.g., coined) the more
different the goods and services need to be if you find the same mark
– Example: You wouldn’t be able to use XEROX for anything computer related or paper
related, but XEROX diapers? Maybe.
• Ideally – coin your own
• Still good – arbitrary
• Suggestive marks are going to give you headaches…

18. Developing a Brand
• Consistent (read as exact) use – do not stray!
– Vermont Trading Company and Vermont Trading Co. and VT Trading
Company are NOT the same marks.
• Have usage guidelines (next slide)
• Do not let unlicensed uses of your mark fester
• Protect your mark
– Registration
– Regular review of use

19. Trademark Use Guidelines
• Trademarks are adjectives, not NOUNS.
– BISSELL® vacuum cleaner
– Trademark’s should not be used possessively
• Trademarks have to be used EXACTLY AS REGISTERED
– No plurals
– No changing “and” with “&”
• Trademarks should be distinguished:
– Capital letters, italics, bold type, different font size, etc.

20. Proper Attribution
• Symbol ® should only be used in connection with a registered
mark
– Can result in claims of unfair competition
– Mexico -> criminal charges possible
• TM and SM symbols:
– Unregistered marks
• Descriptive term in a stylized form
– Strategy – don’t use so that “fair use” can be claimed (in other words,
the mark is either not be used in a trademark sense or is descriptive)

21. Registration and Use
• Application filed
– Wait 3 to 7 months
• Examiner evaluates
– Issues office action (or not)
– Common issues:
• Likelihood of confusion
• Descriptiveness
• Disclaimer
• Revisions to goods and services

22. Registration and Use (cont.)
• Mark is published
– 3rd Parties may opposed if they believe they will be harmed by
allowance
• No opposition or (unsuccessful opposition)
– Mark proceeds to registration
• After registration, rights are not completely secure –
cancellation proceedings are possible
• Continued maintenance required

23. Thanks!
• Karen Tyler, ktyler@dunkielsaunders.com
• Justin McCabe, jmccabe@dunkielsaunders.com
Find out more about Dunkiel Saunders and trademark/ip law at:
www.dunkielsaunders.com
www.greenmountainip.com
Or follow Justin: @justinip