The document provides an overview of trademarks and their protection, detailing the types of intellectual property and the registration process governed by the Lanham Act. It explains the importance of choosing an appropriate mark and the benefits of federal registration, including exclusive rights and legal recourse. Additionally, the document outlines the trademark filing process and the necessity of policing marks post-registration to prevent them from becoming generic.

1. TRADEMARKS - ARE YOUR BRANDS
PROTECTED?
Donna H. Hartman

2. INTELLECTUAL PROPERTY

3. 1. Types of Intellectual Property:
Patent = Invention
(e.g., Heineken Blade® Beer Dispenser
Coravin® Wine Preservation System)
Source: Heineken USA.

4. 1. Types of Intellectual Property:
Copyright = Artistic or Literary Works
(e.g., Book, music, artwork, etc.)
Designated by © [Year] [Name]
1

5. 1. Types of Intellectual Property:
Trademark = Brand (Name and/or logo)
BALLYHOO®
Designated by TM or ®
1

6. 2. What is a Trademark?
A trademark (or service mark), as defined by the US Patent and
Trademark Office (USPTO), is generally:
“a word, phrase, symbol, or design, or a combination thereof, that
identifies and distinguishes the source of the goods of one party
from those of others.”
Trademarks are governed by The Lanham Act a/k/a Trademark Act of 1964, 15 USC §§ 1051 et.
Seq.

7. 2. What is a Trademark?
Filing for a business name or domain names does not
automatically create a trademark.
Web Address: www.1800Contacts.com
Trademark: 1800CONTACTS.COM
Description of Services: “Mail order and telephone order services
in the field of contact lenses and related products, and on-line retail
store services featuring contact lenses and related products.”
Source: USPTO Database

8. 3. Types of Marks
 Standard Character Mark (Word Mark) - allows for more flexibility –
can change font style, color and can be used with or without a
design.
COCA-COLA PEPSI
 Special Form Marks
 Stylized Mark – words in a particular font
Source: USPTO database

9. 3. Types of Marks
 Design Mark – a composite mark comprised of words and
design, or design only.
 Note: The mark must remain exactly as filed.

10. 4. How are Trademarks Protected?
 Federal Registration – File with the United States Patent and
Trademark Office (USPTO)
 State Registration – File with the State (Secretary of State)
 Common Law – No filing required; limited in geography.
 Symbols Used - ®, TM or SM

11. 5. When To File For Protection.
 Ideally - Prior to using a mark (e.g., concept for a new business)
– Protect idea
– Registration process takes time
 After using a mark;
– Concerns:
• Application may be suspended due to a likelihood of confusion with
a Registered mark or pending application
– (1) sound alike (e.g., phonetic equivalents),
– (2) look alike,
– (3) have the same meaning (e.g., foreign equivalent translation), and/or
– (4) create the same general (overall) commercial impression.
• Costly to change mark

12. 6. Trademark Filing Basis
• In Use (Section 1(a)) - Trademarks are used in
commerce. Already selling the products or services.
• Intent-to-Use (Section 1(b)) – Have an idea but have
not yet started selling in commerce. Bona fide
intention
• Foreign: Section 44(d) or 44(e), Section 66(a) –
Based upon a foreign trademark application or
registration.

13. 6. Benefits of Filing for Federal Registration
• Public notice of ownership of the mark
• Exclusive right to use the mark nationally
• Use of the federal registration symbol “® ”
• The ability to sue in federal court
• May file with U.S. Customs and Border Protection
to prevent importation of infringing goods
• A basis to obtain registration in foreign countries
Source: USPTO Website

14. 7. Choosing A Mark.
• Pick a Mark that has the best chance of registering.
• Marks generally fall into one of the following
categories:
 Fanciful
 Arbitrary
 Suggestive
 Descriptive
 Generic
Strong
To
Weak

15. 7. Choosing A Mark (continued)
• Fanciful (Strong):
The strongest marks
Invented words
No other known meaning.

16. 7. Choosing A Mark (continued)
Trademarks owned by their respective
owners.

17. 7. Choosing A Mark (continued)
• Arbitrary (Strong):
• Actual words with a known meaning
• No association or relationship with the goods or services.

18. 7. Choosing A Mark (continued)
Trademarks owned by their respective
owners.

19. 7. Choosing A Mark (continued)
• Suggestive (Strong):
• Suggests, but does not describe, qualities or characters of the
goods or services.
• Imagination required

20. 7. Choosing A Mark (continued)
• Suggestive (Strong):
WITE-OUT
Trademarks are owned by their
respective owners.

21. 7. Choosing A Mark (continued)
• Descriptive (Weak):
 Describe a feature, function, use, characteristic, quality, function, feature or ingredient
of the goods or services.
 No imagination required
 Does not identify the source
 May be refused registration on the Principal Register unless it acquires
distinctiveness or secondary meaning through extensive use in commerce for at least
five (5) years.
• Examples: RED RED WINE
RED & BLACK PEPPER VODKA
JAMAICAN RUM PUNCH
Source: TMEP Section 1209.01(b)

22. 7. Choosing A Mark (continued)
• Generic (Weak):
• The weakest marks
• Never registrable or enforceable against third parties
• Common or everyday names for goods or services
• Everyone has the right to use such terms
• If part of a mark, others will not be prevented from using
the term

23. 7. Choosing A Mark (continued)
• Generic (Weak):
Examples: BEER
GIN
TEQUILA

24. 7. Other Potential Grounds for Refusal
• A Surname;
• Geographically Descriptive of the origin of the
goods/services;
• Disparaging or offensive;
• A foreign term that translates to a descriptive or
generic term;
• An individual’s name or likeness;
• The title of a single book and/or movie; or
• Matter that is used in a purely ornamental
manner. (e.g., Trademark on a hat)

25. 7. Police Marks
• It is important to police marks
• Over time, they can become generic even if they were strong
initially
• License use of marks
• Send cease & desist letters when appropriate
• Examples – Asprin
– Laundromat
– Dry Ice
– Yo-Yo

26. 8. Process
• Conduct a trademark clearance search
• File application -Trademark examiner assigned (3 months)
• Application reviewed (1 month)
• If an objection, the trademark examiner will issue an Office Action outlining
the reasons for the objection. (6 months to respond)
• If no objections, mark published in Trademark Official Gazette
• Once published, the public has 30 days to object (oppose)
• If opposed, it could delay registration
• If no opposition, a Notice of Allowance issued (2 months after opposition
period ends)
• A Statement of Use to be filed or a 6-month extension (max. 4 times)
• Registration certificate issued (1-2 months) (barring any unforeseen
circumstances).

27. 10. Post-Registration
• Post-Registration:
• Must police marks
• File Affidavits and pay nominal fee when required.:
– Between years 5-6
– Between years 9-10
– Every 10 years

28. Re-Cap
• Choose a unique mark
• Conduct clearance search
• File for federal registration as soon as
possible
• Once registered – continue use/police marks
• Do not let marks lapse - File Affidavits and
pay nominal fee when required.

29. Thank You!
dhartman@olenderfeldman.com

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