This document provides an overview of trademarks presented by Connie J. Mableson, Esq. It discusses why trademarks are important, considerations for selecting a trademark, and how to protect a trademark. The presentation covers trademark types, the trademark selection process, searching for trademarks, common law versus federal registration, and maintaining registered trademark rights. The goal is to inform about trademarks while clarifying that no legal advice is being given.

1. Connie J. Mableson, Esq.
www.mablesonlaw.com
602-277-8100

2. The materials in this presentation and information
provided by Connie J. Mableson are for informational
purposes only and not for the purpose of providing legal
advice and no legal advice may be presumed. Use of
and access to these materials and any other information
provided by Connie J. Mableson does not create an
attorney-client relationship between you and Connie J.
Mableson. You should contact your attorney to obtain
advice with respect to any particular issue or problem.

3. 1. Why is a Trademark important to your
business?
2. Considerations and Criteria for
selecting your Trademark.
3. How to Protect your Trademark.

4. 1. Patent
2. Copyright
3. Trademark

5. A copyright protects original works of authorship,
such as writings, music, and works of art that have
been tangibly expressed.
A patent is a limited duration property right relating
to an invention, granted by the United States
Patent and Trademark Office in exchange for
public disclosure of the invention.

6. A trademark is a brand name.
A trademark or service mark includes
any word, name, symbol, design, or any
combination, used or intended to be used
to identify and distinguish the
goods/services of one seller or provider
from those of others, and to indicate the
source of the goods/services.

7. Word, slogan, symbol, design, or
combination that –
1- Identifies the source of your goods
or services (source identifier) AND
2- Distinguishes them from the goods
and services of another party.

9. Customer loyalty = repeat business.
Consistent level of quality that customers
come to expect that generates repeat
business.
Does not need to be of high quality, but
consistently the same quality.
Repeat customers = Goodwill (an asset).

11. Sound
http://www.uspto.gov/trademarks/soundmarks/
Color
Smell – fragrances

12. Domain Name = URL or web address.
Business Name = Name under which you
are doing business in your State. May or
may not be used as a trademark. Merely
registering your LLC or INC with the State
does not grant trademark rights.
Can be used as a trademark if it is used
as a source identifier.

13. Sell GOODS =
Trademark or Trade name (TM)
Provide SERVICES =
Servicemark (SM)
Can be used interchangeably

14. - Choose a strong trademark
- Choose a trademark that will scale with your
business
- Chose a trademark that can be registered with the
USPTO
- Avoid choosing a trademark that is the same or
similar to another trademark

15. - Generic – common words with common
meaning (weakest & not protectable)(Bicycle
for bicycle retailer)
- Descriptive (weak and not immediately
protectable on use)
- Suggestive (strong)
- Arbitrary (stronger)
- Fanciful (strongest)

16. - Descriptive (ingredient, quality, function,
feature, characteristic) and is not immediately
protectable upon use.
- Must obtain secondary meaning by continued
advertising with a big budget so that the
consuming public associates the Trademark
with you (the source).
- After 5 years secondary meaning is
presumed.

17. - Suggests attributes or advantages
- Immediately protectable upon first
use
ROACH MOTEL – for insect traps
FLORIDA TAN – for suntan lotion
GLANCE -A- DAY - for calendars

18. - Common words used in meaningless
context
- Immediately protectable upon first use
- Inherently distinctive
CAMEL for cigarettes
APPLE computer

19. - Made up words with no dictionary
meaning
- Coined terms
- Inherently distinctive and have
protection immediately upon use
KODAK
VERIZON
CLOROX

20. - Merely descriptive
- Surnames (Jackson’s Drycleaners)
- Laudatory (Best Beer in Arizona)
- Misspellings (Kleaners)
- Geographic (Centerville Car Parts)
- Acronymns (ACCD) – most are meaningless
- Deceptive, disparaging, offensive
- “confusingly similar” with another Mark

21. 1) Marks are the same or similar. Look alike,
sound alike or have same meanings.
CREATE SAME COMMERCIAL
IMPRESSION.
2) Goods and Services are Related.
Consumers mistakenly believe the goods and
services come from the same source.
3) X-seed for a seed company vs
Exceed for a company selling live plants

22. Selecting the right brand name will
allow you to differentiate your
product/services of your competitors,
and will also allow you to focus your
time and efforts growing the brand
itself rather than trying to enforce a
weak/descriptive mark.

23. - Word(s)
- Slogan
- Images
- Combination
Remember- Trademarks are source
identifiers and distinguish your
goods/services from those of your
competitor.

24. Check for confusingly similar marks.
Why?
- Someone may be already using the
Mark.
- There may be a Mark similar to yours
that will create customer confusion.
- Differentiation is the key.

25. - Google (name)
- Google images
- USPTO.gov TESS search
- State Search -http://www.azsos.gov
- Purchase a full search (federal, state
and many other databases) especially if
an image is involved.
- WHOIS searches for domain names
(whois.net, Godaddy, many others).

26. - Common Law based on USE of the
Mark
- State by State registration (in each
State where you are using the Mark)
- Federal Registration (www.uspto.gov
)

27. Common Law
First party to use the Trademark in a
particular geographic area is the
“superior” user and has the right to
exclude others from using the same or
similar Trademark on similar
goods/services in that area.
First in time = first in right as to each
geographic area in which the trademark is
used

28. By USING/USE the Trademark -
GOODS: ON the goods or on the
packaging or tags affixed to the goods.
SERVICES: IN CONNECTION
WITH the services by advertising,
brochures, etc.

29. State by State
- Arizona Secretary of State register
Trademark/Trade Name.
http://www.azsos.gov/business_services/tnt/
- $10 Trade Name -$15 Trademark
- Online Forms
- Trade Name registrations last 5
years; Trademarks last 10 years.

30. Federal (USA) Filing -Advantages include-
- Legal presumption you own the Mark.
- Legal presumption of exclusive right to use the Mark
-throughout the entire US and territories.
- Puts public on notice of the ownership of the Mark.
- In the USPTO database so helps others avoid selecting
your Mark or a confusingly similar mark.
- Registration with US Customs & Border protection.
- Right to bring action in federal court.
- Use federal registration as a basis to file in other countries.
- After 5 years of continued use, the Mark becomes
incontestable.
- Use the ®.

31. - If you are actually USING the Trademark,
then file a USE Application.
- If you are currently not using the Trademark
but plan to use it in the next 3 years, then file
an INTENT TO USE Application.
- Interstate commerce requirement – you can
file a federal application only if you are selling
goods or offering services in 2 or more states.

32. 1) Description of Goods or Services. USPTO
classifies goods and services into numerical
“classes”. You must write a description of
your goods and services by using the
USPTO predetermined descriptions or by
using your own “freestyle” description.
2) Specimens. Specimens must show use of
the Mark on goods or in connection with the
services.

33. - File with USPTO electronically
- Examiner appointed to examine the application
- The examination is a “prosecution”
- Examiner may issue an “office action” that
rejects the application for several reasons or asks
that it be changed. The examiner may disagree
with your description of goods and services, may
not like the specimens you submitted to prove
you are using the mark on the goods or in
connection with the services. Six months to
respond.

34. - Once Examination is complete, application
is published in the Official Gazette of the
U.S.
-If no one objects in 30 days, application
goes to registration.
- If a Notice of Protect is filed within the 30
days, the matter goes to TTAB.
- Receive Registration in the mail
- Use the ®

35. - USE the Mark on your goods or in
connection with the services.
-Tickle your calendar for:
Between 5th and 6th year, filed Affidavit of
Continued Use
Between 9th and 10th years, file renewal
- Actively “police” or monitor your Mark to
make sure no one is using it or there is not
another confusingly similar Mark being used.

36. - At any stage
- Can help with determination of generic or
descriptive marks
- Can assist with a search/name availability
- Can write your description of goods/services
- Can assist with a description of a logo mark
- Can prepare responses to Office Actions
- Offer alternatives
- Help to avoid scams

37. No legal advice is being given but
general information only
My contact information:
Connie J. Mableson
602-277-8100
www.mablesonlaw.com